Barnett Outdoors L L C v. Hunters Manufacturing Co Inc

Filing 101

RULING ON CLAIM CONSTRUCTION. Signed by Magistrate Judge C Michael Hill on 11/05/2010. (crt,Davenport, M)

B a r n e t t Outdoors L L C v. Hunters Manufacturing Co Inc

D o c . 101

U N IT E D STATES DISTRICT COURT W E S T E R N DISTRICT OF LOUISIANA B A R N E T T OUTDOORS, LLC VERSUS H U N T E R 'S MANUFACTURING C O M P A N Y , INC. * C I V I L NO. 6:08-1916 * M A G I S T R A T E JUDGE HILL * B Y CONSENT OF THE PARTIES

RULING ON CLAIM CONSTRUCTION T h is patent case is before the Court for construction of the two disputed claim terms in U n ite d States Patent No. 6,901,921 ("the 921 Patent"), that is, the terms "foot stirrup" and " in ter p o se d between".1 Plaintiff, Barnett Outdoors, LLC ("Barnett") accuses the Defendant, H u n te r' s Manufacturing Company, Inc. ("Hunter's") of infringing the claims of the 921 Patent. More specifically, the alleged infringing crossbows are the "Phantom CLS," "Shadow CLS," " P h a n to m Xtra CLS" and "Defender CLS" crossbows. The Court conducted a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U .S . 370, 390, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) ("the Markman hearing") on May 18, 2 0 1 0 .2 Upon review and consideration of the evidence before the Court, the claim construction a n d post-Markman hearing briefs filed by the parties3 , the arguments presented by counsel at
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The parties originally submitted several claim terms for construction. [rec. doc. 33]. However, prior to the h e a r in g , the parties agreed upon a construction of all disputed claim terms, except "foot stirrup" and "interposed b e t w e e n " . [rec. doc. 63]. Thus, these two terms are the sole remaining disputed claim terms for this Court's c o n s tr u c tio n . This understanding was verified by the Court at the Markman hearing.
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The transcript of the Markman hearing has been filed in the record. [rec. doc. 70].

B a rn e tt filed an Opening Claim Construction Brief [rec. doc. 37], a Rebuttal Brief on Claim Construction [ r e c . doc. 49], a Sealed Supplemental Rebuttal Claim Construction Brief [rec. doc. 60] and a Post-Markman H e a r in g Brief [rec. doc. 75]. Hunter's filed an Opening Claim Construction Brief [rec. doc. 43], a Rebuttal Brief on C l a im Construction [rec. doc. 51], a Sealed Supplemental Rebuttal Claim Construction Brief [rec. doc. 57] and a

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Dockets.Justia.com

th e Markman hearing, and the controlling legal authority, the Court issues this Ruling on Claim C o n s tr u c tio n . B a c k gro u n d Barnett is the assignee and owner of the 921 Patent, issued June 7, 2005, and titled " C ro s s b o w with Inset Foot Claw". The named inventor of the 921 Patent is David A. Barnett. Foot stirrups are used when cocking the crossbow.4 The user places "his foot in the s tirru p to hold the front end of the crossbow against the ground while the user pulls the bow s trin g back to a cocked position . . . ." (Barnett Ex. 1, col. 1, lines 8-12). As stated in the "Summary of Invention" section of the 921 Patent, the object of the in v e n tio n was to reduce "the overall length, including the foot stirrup," of conventional c ro s s b o w s . (Id. at col. 1, lines 27-29). The "Background of the Invention" section explains th a t conventional crossbows included a foot stirrup that "extended out of the front end of the s to c k , thus being positioned forward of the bow prods." (Id. at col. 1, lines 12-15). T h e "Background of the Invention" section also explains that users of shorter stature h a v e experienced difficulty "bending over the combined length of the crossbow stock and the f o rw a rd ly projecting stirrup to grasp the string for cocking." (Id. at col. 1, lines 18-21). To o v e rc o m e this problem for persons of smaller stature, the inventor, David Barnett, found it " d e sira b le to develop a crossbow structure in which the combined length of the crossbow stock a n d the foot stirrup is shorter than the conventional arrangements." (Id. at col. 1, lines 22-24).

Post-Markman Hearing Brief [rec. doc. 74].
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T h e term "foot stirrup" is used interchangeably in the 921 Patent with the term "foot claw".

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T o achieve this goal, as stated in the "Background of the Invention" section, David B a rn e tt designed a crossbow "having a foot stirrup . . ., which foot stirrup is inset behind the b o w prod." (Id. at col. 1, lines 7-8). As explained in the "Description of Preferred E m b o d im e n ts " section, "[b]y having the foot claw inset, rearwardly of the center portion of the b o w formed by the prods 10 and 12, the effective length of the overall crossbow . . . is shorter th a n if the foot stirrup were placed forward of the bow. This arrangement facilitates cocking. . . b y persons of shorter stature." (Id. at col. 2, lines 27-33). The "Summary of the Invention" section further explains that Barnett designed a c ro s s b o w with "a forward end to which is mounted a bow and a rearward end for engaging the s h o u ld e r of the user and a foot stirrup mounted to the stock forward end [of the crossbow] and b e in g interposed between the stock forward end and the bow, such that a user's foot is in s e rta b le into the stirrup to support the crossbow for cocking." (Id. at col. 1, lines 32-38). That summary is consistent with the "Abstract" of the invention, which states that the crossbow " inc lud es a foot stirrup mounted to the stock forward end interposed between the stock forward e n d and the bow, such that a user's foot is insertable into such stirrup to support the crossbow fo r cocking." (Barnett Ex. 1 at pg. 1). T h e "Description of Preferred Embodiments" section of the 921 Patent describes a " p a rtic u la rly preferred embodiment of the invention" which is illustrated in figures 1-3 of the o f the 921 Patent. (Id. at col. 1, lines 41-49).

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T h e preferred embodiment includes a stock 2 5 with a forward end 4 and a rearward end 6 . A riser 8 is affixed to the forward end 4 of the stock 2. Prods 10 and 12, which compromise th e bow portion of the crossbow, are affixed to the riser 8. Compound-bow cam-shaped rollers 1 4 and 16 are positioned on the outermost extremities of the prods 10 and 12. Rollers 14 and 1 6 carry the bow string 18. (Id. at col. 1, line 54-col. 2, lines 4). A s further described in the "Description of Preferred Embodiments" section, the riser 8 " is preferably of the general configuration of an open-centered polygon . . . ." For example, the ris e r 8, "could be characterized as having a generally triangular shape, with the prods 10 and 12 m o u n ted to the base of the triangle, and the riser [8] mounted to the stock at an apex generally o p p o s ite that base." As an alternative example, the riser 8 "could be characterized as a g e n e ra lly tetragonal shape, in plane view, with the prods 10 and 12 affixed to two adjacent s id e s of the tetragonal figure, and the riser [8] attached to the stock at an apex of the [ te tra g o n a l] figure generally opposite the prod-mounting portions." (Id. at col. 2, lines 5-16). I n the preferred embodiment described in the "Description of Preferred Embodiments" s e c tio n , "the center of the riser or mount 8 is open and dimensioned to receive the foot of a u s e r" of the crossbow. "The sole of the user's foot . . . engages a foot engaging portion 20 of th e riser or mount 8 . . .to steady the crossbow against the ground or other surface . . . while p u llin g the string 18 back during cocking." "By having the foot claw inset, rearwardly of the c e n ter portion of the bow formed by the prods 10 and 12, the effective length of the overall

The numbers cited in this Ruling refer to the numbers assigned to specific named parts of the invention s h o w n in the illustration and figures of the 921 Patent.

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c ro ss b o w . . . is shorter than if the foot stirrup were placed forward of the bow. This a rra n g e m e n t facilitates cocking . . . by persons of shorter stature." (Id. at col. 2, lines 17-33). The "Description of Preferred Embodiments" section ends with the qualification that w h ile a preferred embodiment of the invention has been described, it is to be understood that th e description is "illustrative only of the principles of this invention and is not to be considered lim ita tiv e thereof." To the contrary, "the scope of this invention is to be limited solely by the c la im s . . . ." (Id. at col. 2, lines 34-41). The patent application (Serial No. 10/769,428) that matured into the 921 Patent was f iled on January 30, 2004. The prosecution history of the 921 Patent has been entered into e v iden ce . [Barnett Ex. 2]. The references cited during prosecution of the 921 Patent include th e Duncan (114), Anderson (797) and Bower (641) Patents which describe conventional c ro s s b o w s mentioned in the Background section of the 921 Patent in which the foot stirrup " e x te n d e d out of the front end of the stock, thus being positioned forward of the bow prods." [ B a r n e tt Exs. 3, 7 and 8]. The Duncan (114) describes a "foldable crossbow" that "has a s tirru p . . . adapted to be engaged by the bowman's foot to assist in anchoring the crossbow w h e n it is cocked." [Barnett Ex. 3, col. 2, lines 21-23]. The Anderson (797) has "a stirrup . . . m o u n ted on the front end of the stock . . . to receive the archer's foot when the crossbow . . . is b e in g cocked." [Barnett Ex. 7, col. 2, lines 11-13]. In the Bower (641) "a stirrup . . . mounted a t the end of [the] barrel . . . may assist the user in cocking the crossbow. That is, by placing th e stirrup . . . on the ground and putting one's foot in it, bowstring . . . may be more easily

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p u lled ." [Barnett Ex. 8, col. 3, lines 19-23]. T h e 921 Patent contains five claims. The parties agree that claim one is the only in d e p e n d en t claim and that the remaining four claims are dependent claims. The claims are as f o l lo w s : 1 . A crossbow comprising a bow, a stock having opposed longitudinal ends, including a forward end to which is m o u n te d said bow, and a rearward end for engaging the shoulder of a user, and a foot stirrup mounted to said stock forward end and being interposed between sa id stock forward end and said bow, such that a user's foot is insertable into said s tirru p to support the crossbow for cocking. 2 . The crossbow of claim 1 wherein said foot stirrup comprises a mount to attach s a id bow to said stock forward end. 3 . The crossbow of claim 2 wherein said bow comprises two bow prods mounted to said bow mount. 4 . The crossbow of claim 3 wherein said bow mount has the general c o n f ig u ra tio n of an open-centered polygon, with said bow prods mounted to a p o rtio n of said polygon and the stock forward end mounted to an apex of said p o lyg o n generally opposite said prod-mounting portion. 5 . The crossbow of claim 4 wherein said open center of said mount is d im e n sio n e d to receive the foot of a user, whereby the bow mount serves as the f o o t stirrup positioned rearwardly of the bow. L e g a l Standard on Claim Construction A patent describes "the exact scope of an Invention and its manufacture to `secure to [ th e patentee] all to which he is entitled, [and] to apprise the public of what is still open to

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th e m .'" Markman v. Westview Instruments, Inc., 517 U.S. 370, 373, 116 S.Ct. 1384, 134 L .E d .2 d 577 (1996) (citation omitted). Indeed, "it is only fair (and statutorily required) that c o m p e tito rs be able to ascertain to a reasonable degree the scope of the patentee's right to e x c lu d e ." Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (5 th Cir. 1995) ( en banc ), a ff'd , 517 U.S. 370, 116 S.Ct. 1384 (1996). The claims of a patent define the patented in v e n tio n to which the patentee is entitled the right to exclude. Markman, 517 U.S. at 373-374; P h i llip s v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) ( en banc) (citations omitted). "Victory in any infringement suit requires a finding that the patent claim[s] `cover[] the a lle g e d infringer's product . . .' which in turn necessitates a determination of `what the word[s] in the claim[s] mean.'" Markman, 517 U.S. at 374 (citation omitted). The meaning and scope o f any disputed terms and limiting expressions in the claims are determined by the court as a m a tte r of law. Vivid Technologies, Inc. v. American Science & Engineering, Inc., 200 F.3d 7 9 5 , 803 (Fed. Cir. 1999) citing Markman, 52 F.3d at 976 and EMI Group North America, Inc. v . Intel Corp., 157 F.3d 887, 891 (Fed. Cir. 1998); Markman, 517 U.S. at 389-390. "[O]nly th o se terms need be construed that are in controversy, and only to the extent necessary to re so lv e the controversy." Vivid Technologies, Inc., 200 F.3d at 803 citing U.S. Surgical Corp. v . Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (claim construction is for "resolution of d ispu ted meanings"). "T h e words of a claim `are generally given their ordinary and customary meaning.'" P h illip s , 415 F.3d at 1312 quoting Vitronics, 90 F.3d at 1582. "The ordinary and customary

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m e a n in g 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 p a te n t application." Phillips, 415 F.3d. at 1313. This "person of ordinary skill in the art is d e e m e d to read the claim term not only in the context of the particular claim in which the d is p u te d term appears, but in the context of the entire patent. . . . " Id. F o r certain claim terms, "the ordinary meaning of claim language as understood by a p e rso n of skill in the art may be readily apparent even to lay judges, and claim construction in s u c h cases involves little more than the application of the widely accepted meaning of c o m m o n ly understood words." Phillips, 415 F.3d at 1314 citing Brown v. 3M, 265 F.3d 1349, 1 3 5 2 (Fed. Cir. 2001). For other claim terms, however, the meaning of the claim language may be less a p p a re n t. To construe those terms, the court considers "`those sources available to the public th a t show what a person of skill in the art would have understood disputed claim language to m e a n . . . [including] the words of the claims themselves, the remainder of the specification, th e prosecution history, and extrinsic evidence concerning relevant scientific principles, the m e a n in g of technical terms, and the state of the art.'" Id. quoting Innova/Pure Water, Inc. v. S a fa r i Water Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). "[ T ]he re is no magic formula or catechism for conducting claim construction"; the court is not barred from considering any particular source, nor is the court required to analyze

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s o u rc e s in any specific sequence. Phillips, 415 F.3d at 1324 (citations omitted). However, the c o u rt must assign the appropriate weight to each source consulted. Id. Intrinsic evidence of record consists of "the patent itself, including the claims, the s p e c if ic a tio n and, if in evidence, the prosecution history." Vitronics Corp., 90 F.3d at 1582 c itin g Markman, 52 F.3d at 979. The Federal Circuit has repeatedly emphasized the primary im p o r ta n c e of intrinsic evidence in claim construction, deeming intrinsic evidence "the most s ig n if ic a n t source of the legally operative meaning of disputed claim language." Vitronics C o r p ., 90 F.3d at 1582; Phillips, 415 F.3d at 1317. Extrinsic evidence "consists of all evidence external to the patent and prosecution h is to ry, including expert and inventor testimony, dictionaries, and learned treatises." Phillips, 4 1 5 F.3d at 1317 citing Markman, 52 F.3d at 980. Although extrinsic evidence may assist the c o u rt in claim construction, it is "less significant than the intrinsic record in determining the le g a lly operative meaning of claim language." Id. (internal quotations and citation omitted). This is so because, in general, extrinsic evidence is less reliable than intrinsic evidence in d e t e rm in i n g how to read claim terms.6 Id. at 1318-1319. Moreover, intrinsic evidence

The Federal Circuit has explained that, in general, extrinsic evidence is less reliable than intrinsic evidence in determining how to read claim terms because: (1) "extrinsic evidence is not part of the patent and does not have th e specification's virtue of being created at the time of patent prosecution for the purpose of explaining the patent's s c o p e and meaning", (2) "extrinsic publications may not be written by or for skilled artisans and therefore may not r e f le c t the understanding of a skilled artisan in the field of the patent", (3) "extrinsic evidence consisting of expert r e p o r ts and testimony is generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence", (4) "there is a virtually unbounded universe of potential extrinsic evidence of s o m e marginal relevance that could be brought to bear on any claim construction question [and] each party will n a t u r a l l y choose the pieces of extrinsic evidence most favorable to its cause" and (5) "undue reliance on extrinsic e v i d e n c e poses the risk that it will be used to change the meaning of claims in derogation of the `indisputable public r e c o r d s consisting of the claims, the specification and the prosecution history,' thereby undermining the public n o t i c e function of patents. Id. at 1318-1319.

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c o n stitu tes "the public record of the patentee's claim, a record on which the public is entitled to re ly" in ascertaining the scope of the patentee's claimed invention to design around it. Vitronics C o r p ., 90 F.3d at 1583. Allowing the public record to be altered or changed by extrinsic e v id e n c e would make this right meaningless. Id. Within the class of intrinsic evidence, the claims themselves provide substantial g u id a n c e as to the meaning of particular claim terms. Phillips, 415 F.3d at 1314 citing V itr o n ic s, 90 F.3d at 1582 and ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2 0 0 3 ) ("the context of the surrounding words of the claim also must be considered in d e t e rm in i n g the ordinary and customary meaning of those terms"). In the absence of modifiers, g e n e ra l descriptive terms are typically construed as having their full meaning. Innova/Pure W a te r, Inc., 381 F.3d at 1118. The context in which a term is used in the asserted claim can be h ig h ly instructive. Phillips, 415 F.3d at 1314. Other claims of the patent in question, both a ss e rte d and unasserted, can also be valuable sources of enlightenment as to the meaning of a c la im term. Id. citing Vitronics, 90 F.3d at 1582. Because claim terms are normally used c o n sis te n tly throughout the patent, the usage of a term in one claim can often illuminate the m e a n in g of the same term in other claims. Id. citing Rexnord Corp. v. Laitram Corp., 274 F.3d 1 3 3 6 , 1342 (Fed. Cir. 2001) and CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (F e d . Cir. 1997). Differences among claims can also be a useful guide in understanding the meaning of p a rtic u la r claim terms. Id. citing Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed.

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C ir. 1991). For example, the doctrine of claim differentiation creates a presumption that each c la im in a patent has a different scope. SunRace Roots v. Enterprise Co., Ltd. v. SRAM Corp., 3 3 6 F.3d 1298, 1302 (Fed. Cir. 2003); Wenger Mfg. v. Coating Machinery Systems, Inc., 239 F .3 d 1225, 1234 (Fed. Cir. 2001). Thus, the presence of a dependent claim that adds a p a rticu lar limitation gives rise to a presumption that the limitation in question is not present in th e independent claim. Phillips, 415 F.3d at 1315 citing Liebel-Flarsheim Co. v. Medrad, Inc., 3 5 8 F.3d 898, 910 (Fed. Cir. 2004). This presumption is strongest when the limitation in d is p u te is the only meaningful difference between an independent and a dependent claim. Liebel-Flarsheim Co., 358 F.3d at 910. The claims, of course, do not stand alone. Rather, they are part of "a fully integrated w r itte n instrument," consisting principally of a specification that concludes with the claims. F o r that reason, claims "must be read in view of the specification, of which they are a part." Id. citing Markman, 52 F.3d at 978-979. The specification "is always highly relevant to the c la im construction analysis" and "is the single best guide to the meaning of a disputed term." Id. citing Vitronics Corp., 90 F.3d at 1582. This is so because "the words of the claims must b e based on the description [in the specification] . . ." and, hence, the specification is "the best s o u rc e for understanding a technical term . . . from which it arose." Id citing Standard Oil Co. v . Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985), Multiform Desiccants, 133 F.3d at 1 4 7 8 and Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir. 2 0 0 4 ).

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T h e importance of the specification in claim construction derives from its statutory role. T h e close kinship between the written description and the claims is enforced by the statutory re q u ire m e n t that the specification describe the claimed invention in "full, clear, concise, and e x a ct terms." Phillips, 415 F.3d at 1316 citing 35 U.S.C. § 112, ¶ 1. Consistent with that g e n e ra l principle, cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such c a s e s , the inventor's lexicography governs. Id. In other cases, the specification may reveal an in ten tio n a l disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, th e inventor has dictated the correct claim scope, and the inventor's intention, as expressed in th e specification, is regarded as dispositive. Id. For example, where the patent criticizes a f e atu re of prior products, such criticism operates as a clear disavowal of that feature. A s tr a z e n e ca AB, et al. v. Mutual Pharmaceutical Company, Inc., 384 F.3d 1333, 1340 (Fed. C ir. 2004). The patentee's choice of preferred embodiments can shed light on the intended scope of th e claims.7 Astrazeneca AB, 384 F.3d at 1340. However, "particular embodiments appearing in the specification will not generally be read into the claims . . . . What is patented is not restricted to the examples, but is defined by the words in the claims if those claims are

In Phillips, the Federal Circuit explained that "[o]ne of the best ways to teach a person of ordinary skill in th e art how to make and use the invention is to provide an example of how to practice the invention in a particular c a s e . Much of the time, upon reading the specification [keeping in mind that the purposes of the specification are to t e a c h and enable those of skill in the art to make and use the invention and to provide a best mode for doing so], it w ill become clear whether the patentee is setting out specific examples of the invention to accomplish those goals, or w h e t h e r the patentee instead intends for the claims and the embodiments in the specification to be strictly c o e x te n siv e ." Phillips, 415 F.3d at 1323 (citations omitted).

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s u p p o rte d by the specification in the manner required by [the Patent Act]." Specialty C o m p o s ite s v. Cabot Corp., 845 F.2d 981, 987 (Fed. Cir. 1988) (citations omitted); Phillips, 4 1 5 F.3d at 1323. Thus, the Federal Circuit has "expressly rejected the contention that if a p a te n t describes only a single embodiment, the claims of the patent must be construed as being lim ite d to that embodiment." Phillips, 415 F.3d at 1323 citing Gemstar-TV Guide, 383 F.3d at 1 3 6 6 . Thus, "even where a patent describes only a single embodiment, claims will not be `read re stric tiv e ly unless the patentee has demonstrated a clear intention to limit the claim scope u sing words or expressions of manifest exclusion or restriction.'" Innova/Pure Water, Inc., 381 F .3 d at 1117 citing Liebel-Flarsheim, 358 F.3d at 906 quoting Teleflex, Inc. v. Ficosa N. Am. C o r p ., 299 F.3d 1313, 1327 (Fed. Cir. 2002). The prosecution history, which is likewise designated as part of the intrinsic evidence, s h o u ld be considered by the court, if it is in evidence. Phillips, 415 F.3d at 1317 citing M a r k m a n , 52 F.3d at 980, Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 15 L.Ed.2d 5 4 5 (1966) ("[A]n invention is construed not only in the light of the claims, but also with re f ere n c e to the file wrapper or prosecution history in the Patent Office."). The prosecution h is to ry consists of the complete record of the proceedings before the PTO and includes the p rio r art cited during the examination of the patent. Id. citing Autogiro, 384 F.2d at 399. This "`undisputed public record' of proceedings in the PTO is of primary significance in u n d e rs ta n d in g the claims." Markman, 52 F.3d at 980 citing Autogiro, 384 F.2d at 397. Thus, th e "court has broad power to look to the prosecution history of the patent in order to ascertain

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th e true meaning of the language used in the patent claims." Id. However, because the p ro se c u tio n history represents an ongoing negotiation between the PTO and the applicant, ra th e r than the final product of that negotiation, it often lacks the clarity of the specification a n d thus is less useful for claim construction purposes. Id. at 1317 (citations omitted). Within the class of extrinsic evidence, the Federal Circuit has observed that dictionaries c a n be useful in claim construction. Phillips, 415 F.3d at 1318 citing Renishaw, 158 F.3d at 1 2 5 0 and Rexnord, 274 F.3d at 1344. Dictionaries or comparable sources are often useful to a s s is t in understanding the commonly understood meaning of words in claim interpretation. Id. a t 1322 citing Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 134, 62 S.Ct. 513, 86 L .E d . 736 (1942), Weber Elec. Co. v. E.H. Freeman Elec. Co., 256 U.S. 668, 678, 41 S.Ct. 6 0 0 , 65 L.Ed. 1162 (1921), Renishaw, 158 F.3d at 1247-53 (approving the use of dictionaries w ith proper respect for the role of intrinsic evidence). Likewise, technical dictionaries may help a court "to better understand the underlying te c h n o lo g y and the way in which one of skill in the art might use the claim terms." Id. at 1318 c itin g Vitronics, 90 F.3d at 1584 n. 6. Because "dictionaries, and especially technical d ic tio n a rie s, endeavor to collect the accepted meanings of terms used in various fields of s c ie n c e and technology, those resources have been properly recognized as among the many to o ls that can assist the court in determining the meaning of particular terminology to those of s k ill in the art of the invention." Id. citing Teleflex, Inc., 299 F.3d at 1325.

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S u c h evidence, "may be considered if the court deems it helpful in determining `the true m e a n in g of language used in the patent claims.'" Id. citing Markman, 52 F.3d at 980. In sum, " ju d g e s are free to consult dictionaries and technical treatises at any time in order to better u n d e rs ta n d the underlying technology and may also rely on dictionary definitions when c o n stru in g claim terms. . . ." Id. at 1322. However, given the primary importance of intrinsic evidence, the court's consultation an d reliance on dictionaries and technical treatises is limited to the extent that "the dictionary d e f in itio n does not contradict any definition found in or ascertained by a reading of the patent d o c u m e n ts ." Id. at 1322-1323 citing Vitronics, 90 F.3d at 1584 n. 6. L ik e w ise , testimony of the inventor may not be used to vary or contradict the claim la n g u a g e , nor contradict the import of other parts of the specification. Vitronics, 90 F.3d at 1 5 8 4 . Where patent documents are unambiguous, testimony regarding the inventor's s u b je c tiv e intent as to the claim scope has no effect; such testimony cannot guide the court to a p ro p e r interpretation when the patent documents themselves do so clearly. Id. In addition, a court in its discretion may rely on prior art proffered by one of the parties. Id. This prior art can often help to demonstrate how a disputed term is used by those skilled in th e art and what those skilled in the art generally believe a certain term means. Id. Prior art e v id e n c e is useful "to show what was then old, to distinguish what was new, and to aid the c o u rt in the construction of the patent." Markman, 52 F.3d at 980 citing Brown v. Piper, 91 U .S . 37, 41, 23 L.Ed. 200 (1875). Prior art cited in the prosecution history falls within the

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c a teg o ry of intrinsic evidence, while prior art not considered by the examiner is extrinsic e v id e n c e . Tate Access Floors, Inc. v. Interface Architectural Resources, Inc., 279 F.3d 1357, 1 3 7 2 fn. 4 (Fed. Cir. 2002). Construction of Claim Terms F o o t Stirrup T h e term "foot stirrup" appears in Claims 1, 2 and 5.8 B a rn e tt proposes the following construction: "That piece of a crossbow defined by an o p en ing into which a foot is placed to support the crossbow for cocking." Barnett's c o n stru c tio n encompasses the entire three sided open-centered polygon, including the foot e n g a g i n g bottom portion and the two sides. H u n te r's proposes the following construction: "The piece of a crossbow where you put yo u r foot onto to support the crossbow for cocking." Hunter's construction includes only the f o o t engaging bottom piece, upon which the user places his foot while cocking the crossbow. F o r the following reasons, the Court adopts Barnett's construction in its entirety as that co n stru ctio n is consistent with the intrinsic evidence and the ordinary and customary u n d e rs ta n d in g of the term as used in the crossbow industry, with the addition of clarifying la n g u a g e as follows: That piece of a crossbow defined by an opening in to, and onto, which a f o o t is placed to support the crossbow for cocking.

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See fn. 4, supra.

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T h e 921 Patent does not define or label "foot stirrup". However, the 921 Patent makes c le a r that the "foot stirrup" encompasses both the mount or rise, 8, and the foot engaging p o rtio n , 20. Indeed, if no side structure was included, as Hunter's suggests, there could be no o p e n in g into which "a user's foot is insertable into" as stated in the "Abstract" and taught in b o th the specification ("Summary of the Invention") and Claim 1, itself. Claim 1 clearly states that the "user's foot is insertable into" the foot stirrup, not "onto" th e foot stirrup. Indeed, if the "foot stirrup" was limited solely to the bottom foot engaging p o rtio n as Hunter's suggests, Claim 1 would necessarily have to have stated that the user's foot b e placed "onto" the foot stirrup, as it is impossible to place a foot "into" a solid singularly sid e d object. F u r th e rm o re , Claim 2, which depends from independent Claim 1, states that the "foot s tirru p comprises a mount to attach said bow to said stock forward end." If the "foot stirrup" w a s limited to the bottom foot engaging portion, Claim 2 would be rendered meaningless; the f ig u re s contained in the 921 Patent make clear that the foot engaging portion, 20, does not a tta c h the bow (or the bow prods) to the forward end of the stock, that is the function of the m o u n t or riser, 8, which the "foot stirrup" comprises. Moreover, that "mount" is further d e f in e d in Claims 4 and 5, respectively, as "an open-centered polygon" "dimensioned to re c eiv e the foot of a user whereby the bow mount serves as the foot stirrup . . . ." Thus, the Court cannot adopt the construction urged by Hunter's, as a singularly sided, v e rtic a l piece onto which the user's foot is placed, as that construction is contrary to the plain

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la n g u a g e of the claims themselves. Hunter's construction cannot satisfy the criteria for the " f o o t stirrup" set forth in the claims, as the foot engaging portion does not attach the bow to the fo rw ard end of the stock and is neither open-centered nor dimensioned to receive the user's f o o t. To the contrary, the claims envision the entirety of the structure between the bow (or bow p ro d s) and the forward end of the stock, defined by an opening, through which, and onto w h ic h , the user places his foot to cock the crossbow. The 921 Patent's specification is consistent with this interpretation of the term "foot s tir ru p " . The "Abstract", which briefly describes the invention, states that the invention is a c ro s s b o w that includes a foot stirrup "such that a user's foot is insertable into such stirrup to s u p p o rt the crossbow for cocking." (emphasis added). The "Summary of the Invention" s e c tio n of the specification likewise describes the "foot stirrup" as encompassing a polygon w ith sides and a bottom by stating that the "user's foot is insertable into the stirrup to support th e crossbow for cocking." (emphasis added). Moreover, the "Background of the Invention" s e c tio n of the specification likewise describes conventional prior art foot stirrups used to cock c ro s s b o w s as the entire structure into which a user places his foot to hold the crossbow for c o c k in g by stating that "the user can place his foot in the stirrup . . . ." (emphasis added). Finally, the "Description of the Preferred Embodiments" of the invention makes clear th a t the riser or mount is not only an integral part of the foot stirrup, but actually functions as th e foot stirrup teaching that "the riser, or mount, 8 is preferably of the general configuration of a n open-centered polygon, suitably triangular or tetragonal figure, having a central opening . . .

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th e center of the riser or mount 8 is open and dimensioned to receive the foot of a user." Thus, a n y construction of the term "foot stirrup" which excludes any side structure, which in this case h a s the dual function as serving as the riser or mount, is clearly not supported by the express la n g u a g e in the specification. T h e Court's construction of the term "foot stirrup" is further supported by the prior art c ite d in the prosecution history of the 921 Patent. Review of the drawings of the Duncan (1 1 4 ), Anderson (797) and Bower (641) Patents plainly reveals that conventional prior art foot s tirru p s where not construed as limited to the bottom piece onto which the user's foot rested d u rin g cocking of the crossbow. To the contrary, as illustrated and labeled as 17 in Figure 1 of th e Duncan (114), as 12 in Figure 1 of the Anderson (797) and as 25 in Figures 1-3 of the B o w e rs (641) Patents, such foot stirrups included the sides and bottom of an open-centered p o lyg o n . Moreover, the Bower (641) Patent specifically describes a preferred embodiment as e m p lo yin g a stirrup that assists the user to cock the crossbow "by placing [the] stirrup on the g ro u n d and putting one's foot in it" so that the "bowstring may be more easily pulled." [Barnett E x . 8, col. 3, lines 19-22 (emphasis added)]. If the foot stirrup was limited to the bottom portion only, the user's foot would n e c es s a rily have to have be placed on the foot stirrup, as opposed to in it. Likewise the A n d e rs o n (797) Patent describes a conventional prior art foot stirrup as "mounted on the front e n d of the stock to receive the archer's foot when the crossbow is being cocked." [Barnett Ex. 7 , col. 2, lines 11-13]. The use of the word "receive" clearly contemplates putting the foot into

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a multi-sided structure, as opposed to onto a single sided object. Had that been the case, the w o rd "received" would not have been necessary for a full understanding of the term. H o w e v e r, given the above construction, a clarifying modification of the construction p ro p o s e d by Barnett is necessary. While Hunter's suggests that the term cannot be construed as both permitting the foot to be placed into, as well as onto the structure, this Court's c o n s tr u c tio n allows exactly that. Because the term "foot stirrup" has been construed as a p h ysic a l structure including the bottom foot engaging portion, labeled as 20 in the 921 Patent, a s well as the riser or mount, labeled as 8 in the 921 Patent, the foot stirrup is not only the s tru c tu re into which a foot is placed, but also onto which the foot is placed for cocking. Additional clarifying language is thus necessary to ensure that the term includes and fully c o n v e ys the function of the foot stirrup ­ to support the crossbow against the ground while c o c k in g . In light of the above cited intrinsic evidence, the Court need not look to extrinsic e v id e n c e to determine how a person of ordinary skill in the art would understand the term "foot stirru p " as suggested by Hunter's. To the contrary, given the primary importance this intrinsic e v id e n c e , it would be error for this Court to look to less significant and less reliable extrinsic e v id e n c e , which invariably would alter or change the public record, on which the public is e n title d to rely in ascertaining the meaning of the claim terms. See Phillips, supra.

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In accordance with the above analysis, "foot stirrup" is construed as follows: That piece o f a crossbow defined by an opening into and onto which a foot is placed to support the c ro s s b o w for cocking. Interposed Between T h e term "interposed between" appears in Claim 1.9 H u n te r's proposes the following construction: "Located in the space forward of the s to c k forward end and rearward of the bow." B a rn e tt proposes the following construction: "Inserted into or across a space separating tw o points." F o r the following reasons, the Court adopts Hunter's construction in its entirety as that c o n stru c tio n is consistent with both the intrinsic evidence and is consistent with the notice f u n c tio n of a Patent. Barnett argues that the term has no "unique definition" in the crossbow industry and th e re f o re should be construed in accordance with dictionary definitions of each word appearing in the term which represents the "widely accepted meaning of [these] commonly understood w o rd s ." While the Court agrees that dictionary definitions may be helpful, the Court cannot rely on these definitions in a vacuum as it is not "readily apparent" to the Court how the term w o u ld be understood by a person of skill in the art. See Phillips, 415 F.3d at 1313. To make th a t determination, it is necessary "to read the claim term not only in the context of the

9

Although consisting of two words, the Court will refer to the phase collectively as a single "term."

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p a rtic u la r claim in which the disputed term appears, but in the context of the entire patent. . . . " Id. While the term appears in the Abstract and Summary of the Invention, it is used in those sec tio n s identically as set forth in Claim 1. However, no specific definition is given to the term in the 921 Patent. More specifically, Claim 1, in which the term appears, does not explain w h e th e r part of the foot stirrup may extend forward of the bow prods. The meaning conveyed b y the term may nevertheless be construed by examination of the Background of the Invention, th e Description of the Preferred Embodiments and the language of, and differences among, the f iv e claims set forth in the 921 Patent. See Markman, 52 F.3d at 979 ("Claims must be read in v iew of the specification, of which they are a part."). T h e 921 Patent specification reveals that the inventor, David Barnett, limited the scope o f the term "interposed between" in Claim 1. The "Background of the Invention" section c le a rly explains that the sole purpose of the invention was to facilitate crossbow use by persons o f shorter stature by shortening "the combined length of the crossbow stock and the forwardly p ro je c tin g stirrup" of prior art crossbows. The 921 Patent admits that prior art crossbows in c lu d e d a foot stirrup which "extended out the front end of the stock of the crossbow, thus b e in g positioned forward of the bow prods." Indeed, the prior art cited during the prosecution o f the 921 Patent included crossbow with foot stirrups entirely in front of the bow prods (A n d erso n 797, Bower 641). In order to set the Barnett crossbow apart from these prior art

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c ro s s b o w s , David Barnett, developed a crossbow "having a foot stirrup . . ., which foot stirrup is inset behind the bow prod." (emphasis added). Furthermore, as explained in the "Description of Preferred Embodiments" section "[b]y h a v in g the foot claw inset, rearwardly of the center portion of the bow formed by the prods 10 a n d 12, the effective length of the overall crossbow . . . is shorter than if the foot stirrup were p la c e d forward of the bow. (emphasis added). This arrangement facilitates cocking . . . by p e rs o n s of shorter stature." Thus, the only foot stirrup contemplated by, and included in, the invention is one that is in se t behind the bow prods, not one that is merely partially behind the prods; such a feature is o u ts id e the scope of Claim 1. Where the specification makes clear that the invention does not in c lu d e a particular feature, that feature is deemed to be outside the reach of the claims of the p a te n t, even though the language of the claims, read without reference to the specification, m ig h t be considered broad enough to encompass the feature in question. SciMed Life Systems, In c . v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). Despite the clear and express teachings of the 921 Patent that the foot stirrup must be lo c a te d completely rearward of the bow prods, Barnett claims herein that its crossbow e n c o m p a s s e s a design wherein the foot stirrup may extend forward of the bow prods, arguing th a t the phrase "interposed between" must be construed as simply meaning that the foot stirrup b e partially between the bow prods and the stock forward end. That construction is not

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c o n sis te n t with the above cited intrinsic evidence and is further not supported for the following re a s o n s . The 921 Patent admits that foot stirrups of prior art crossbows extended in front of the b o w or bow prods. Thus, to adopt Barnett's construction of "interposed between" would be, in e ss e n c e, construing the 921 Patent as practicing prior art. Indeed, the Patent would not have b e e n issued if this were, in fact, the case since the invention would be encompassed by the a d m itte d prior art. To remedy that obvious result, the 921 Patent disclaims these prior art crossbows in w h ic h the foot stirrup extended in front of the bow or bow prods, by criticizing that design as n o t suitable for shorter persons. Such criticism of this feature of the prior art crossbows o p era tes as a clear disavowel of the feature. See Astrazeneca AB, 384 F.3d at 1340. This d is a v o w e l in the specification dictates the correct construction of the claim scope and the in v e n to r' s intention expressed therein is regarded as dispositive. See Phillips, 415 F.3d at 1 3 1 6 . In light of this clear disavowel of prior art crossbow foot stirrups, the Court concludes th a t the terms "interposed between" should be construed narrowly, and that one skilled in the a rt reading Claim 1 would conclude that the terms do not encompass a crossbow with some p o r tio n of the foot stirrup forward of the bow prods. M o re o v e r, since the sole object of the invention is to shorten the length of the crossbow, to construe "interposed between" as permitting extension of the foot stirrup beyond the bow p ro d s, would be contrary to the invention's stated sole objective ­ to decrease the overall

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le n g th of the crossbow. Any construction in which the foot stirrup extends beyond the bow p ro d s would necessarily increase, rather than decrease the overall length of the crossbow, and, th e re b y, negate the inventor's solution to the problem encountered by users of shorter stature, who admittedly have difficulty bending over the combined length of both the crossbow stock a n d foot stirrup. Hunter's proposed construction, construing the term "interposed between" to mean that the foot stirrup be located entirely in the space forward of the stock forward end and rearward e n d of the bow, is consistent with the accomplishment of the 921 Patent's stated objective. Furthermore, while it is improper to limit the claims to the particular preferred e m b o d im e n ts described in the specification, the patentee's choice of preferred embodiments c a n shed light on the intended scope of the claims. See Astrazeneca AB, 384 F.3d at 13401 3 4 1 . Tellingly, in this case, the preferred embodiment describes the foot stirrup or "foot c law " as "inset, rearwardly of the center portion of the bow formed by the prods . . ." and all th re e drawings illustrating the preferred embodiment of the Barnett invention show exactly that ­ the entire foot stirrup located rearward of the bow prods with no portion of the stirrup e x te n d in g in front of the bow prods. This fact adds further support to the conclusion that the te rm "interposed between" in Claim 1 should be construed as Hunter's suggests. Additionally, although David Barnett testified that he made four prototypes of his in v e n tio n , only the fourth prototype, with the foot stirrup completely behind the bow prods, is d e sc rib e d in the 921 Patent. That testimony is supported by the intrinsic evidence and the

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a b o v e analysis. Under black letter patent law, a patent must apprise to the public of the limits o f the patentee's property right, that which is not open to them; thus, competitors must be able to ascertain, to a reasonable degree, the scope of the patentee's right to exclude. See Markman, 5 1 7 U.S. at 373-374; Markman, 52 F.3d at 978. Likewise, an important consideration in claim c o n stru c tio n is whether the patent has given adequate notice to the public of the proposed claim c o n s tru c tio n . Dayco Products, Inc. v. Total Containment, Inc., 258 F.3d 1317, 1324 (Fed. Cir. 2 0 0 1 ). In light of the above analysis, the novel and distinguishing feature of the Barnett c ro s s b o w is that the foot stirrup is located behind the bow prods to shorten the overall length of th e crossbow. Nowhere does the 921 Patent disclose that having any portion of the foot stirrup f o r w a r d of the bow prods is a part of the invention. To the contrary, David Barnett's criticism a n d distinction of prior art foot stirrups that are forward of the bow prods excludes such a c o n stru c tio n from the claimed invention. Moreover, while Barnett argues that the stated o b jectiv e is achieved if the foot stirrup is only partially located behind the bow limbs, the Court d o e s not find this argument persuasive, as such a construction places no limits on how far the f o o t stirrup could extend forward of the bow before infringing the claimed invention. For all o f these reasons, the patent gives no notice to those of ordinary skill in the art that the 921 P a te n t encompasses crossbows with any portion of the foot stirrup forward of the bow prods. Finally, the language of, and differences among, the five claims set forth in the 921 P a te n t further supports the conclusion that the term "interposed between" in Claim 1 should be

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c o n stru e d as locating the entirety of the foot stirrup forward of the stock forward end and c o m p lete ly rearward of the bow prods. Nothing in the language of Claim 1 indicates that only a portion of the foot stirrup is interposed between the stock forward end and the bow. To the c o n tra ry, if that were, in fact, the correct construction, the term a "portion" could have been inclu d ed in the claim to place the public on notice of all that is claimed. Indeed, the term " p o rtio n " is used in Claim 4 in connection with another feature of the invention, describing the c la im e d invention as having the "bow prods mounted to a portion of said polygon." The use of th is term in Claim 4 places everyone on notice that the bow prods need only be mounted to a p o rtio n of the polygon; the term is noticeably absent from Claim 1. Barnett argues that Hunter's proposed construction of "interposed between" disregards th e doctrine of claim differentiation, which, it argues is controlling. More specifically, Barnett a rg u e s that dependent Claim 5 limits the term "interposed between" to a foot stirrup which is " p o sitio n e d rearwardly of the bow." Barnett argues that the sole independent claim, Claim 1, b e in g broader in scope than Claim 5 that depends from it, should not be limited to foot stirrups th a t are completely behind the bow. The undersigned disagrees. As noted by the Federal Circuit in O.I. Corporation v. Tekmar Company, Inc., 115 F.3d 1 5 7 6 , 1581 (Fed. Cir. 1997), "[a]lthough the doctrine of claim differentiation may at times be c o n tro llin g , construction of claims is not based solely upon the language of other claims; the d o c trin e cannot alter a definition that is otherwise clear from the claim language, description, a n d prosecution history." Id. at 1582 citing Hormone Research Found., Inc. v. Genentech, In c ., 904 F.2d 1558, 1567 n. 15 (Fed. Cir. 1990) (stating that the doctrine of claim

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d if f ere n tia tio n "cannot overshadow the express and contrary intentions of the patent d ra f ts m a n " ). Given the above, the Court concludes that the specification provides a clear m e a n in g for the language of the disputed claim term, "interposed between", in this case and th a t this trumps the doctrine of claim differentiation. F u r th e rm o re , review of the entirety of Claim 5 reveals that the claim limits the "open c e n ter e d " bow mount described in Claim 4, not the foot stirrup described in Claim 1. In Claim 5 , the open center of the mount described in Claim 4 is "dimensioned to receive the foot of a u s e r" and it is the bow mount that is "positioned rearwardly of the bow." Thus, the fact that th e bow mount is open to receive a foot and is positioned rearwardly of the bow differentiates C laim 5 from Claim 4, as well as Claim 1. As a result, the doctrine of claim differentiation is s a tis f ie d . Moreover, because these limitations in Claim 5 are directed to the bow mount, the d o c trin e of claim differentiation does not require that the foot stirrup of Claim 1 be interpreted b ro a d ly as permitting location of the foot stirrup forward of the bow prods. In accordance with the above analysis,"interposed between is construed as follows: "Located in the space forward of the stock forward end and rearward of the bow." C o n c lu s io n Based on the foregoing, the Court construes the disputed terms, "foot stirrup" and " in te rp o s e d between" as set forth above.

S ig n e d this 5 th day of November, 2010, at Lafayette, Louisiana.

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