Scarborough v. Integricert L L C

Filing 153

RULING ON CLAIM CONSTRUCTION: For the foregoing reasons, the Court construes the disputed terms as set out above. Signed by Magistrate Judge C Michael Hill on 8/31/2015. (crt,Chicola, C)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF LOUISIANA
RANDALL SCARBOROUGH

*CIVIL NO. 6:12-0396

VERSUS

*MAGISTRATE JUDGE HILL

INTEGRICERT, LLC.

*BY CONSENT OF THE PARTIES
RULING ON CLAIM CONSTRUCTION

This patent case is before the Court for construction of the ten disputed claim terms in
United States Patent Nos. 6,848,322 (“the 322 Patent”) and 7,284,447 ("the 447 Patent"), that
is, the terms “pad eye”, "non-destructive(ly)", "attachment means", "attachment structure",
"control means" "control manifold", "fluid attachment means (or apparatus)", "lifting lug",
"testing the integrity of the welding (or weld)" and "about said at least one desired test piece."1
Plaintiff, Randall Scarborough (“Scarborough”) accuses the Defendant, Integricert, LLC
("Integricert"”) of infringing several claims of the 322 and 447 Patents.
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 August
27, 2013.2 Thereafter, re-examination of five claims of the 447 Patent and all claims of the 322

1

The parties originally submitted several claim terms for construction. [rec. doc. 71]. However,
prior to the hearing, the parties agreed upon a construction of all disputed claim terms, except those listed
above; an Amended Joint Claim Construction Chart was filed into the record. [rec. doc. 78]. At the
Markman hearing, Integricert acknowledged that it does not take the position that "substantially
perpendicular" excludes a perfect 90 degree angle and that it would forgo the inclusion of "to the test
piece" in its proposed definition. Therefore, the parties agreed upon a construction of an eleventh term,
"substantially perpendicular" to mean "approximately, near or at, a right angle". [See rec. doc. 82 at pg.
62-65].
2

The transcript of the Markman hearing has been filed in the record. [rec. doc. 82].

Patent was granted. Accordingly, the action was stayed. [rec. doc. 103].
The stay was lifted on February 5, 2015 after the PTO issued certificates of reexamination. [rec. doc. 109]. Upon re-examination, all claims of the 322 Patent (1-21) were
determined to be patentable as amended; four claims of the 447 Patent were determined to be
patentable as amended and one claim (29) was canceled.3 Accordingly, the parties were
permitted to file Supplemental Claim Construction Briefs on or before May 4, 2015. [rec. doc.
131].
Upon review and consideration of the evidence before the Court, the claim construction,
post-Markman hearing and post-re-examination supplemental briefs filed by the parties4, the
arguments presented by counsel at the Markman hearing, and the controlling legal authority,
the Court issues this Ruling on Claim Construction.
Background
Scarborough is the inventor and owner of both the 322 and 447 Patents, originally
issued on February 1, 2005 and October 23, 2007, respectively, and titled “Apparatus and

3

As a result, Scarborough filed a Motion for Partial Summary Judgment on Validity [rec. doc.
107], and Cross-Motions for Partial Summary Judgment on absolute intervening rights were filed. [rec.
docs. 122 and 123]. Oral argument on those Motions was heard on April 22, 2015. [rec. docs. 131 and
132]. These Motions have been determined by separate Rulings. [rec. docs. 150 and 151].
4

Scarborough filed an Opening Claim Construction Brief [rec. doc. 63], a Reply Brief on Claim
Construction [rec. doc. 70], a Post-Markman Hearing Brief [rec. doc. 83] and a Post-Re-Examination
Supplemental Brief [rec. doc. 134]. Integricert filed a Responsive Claim Construction Brief [rec. doc.
66], a Post-Markman Hearing Brief [rec. doc. 81] and a Post-Re-Examination Supplemental Brief [rec.
doc. 135].

2

Method for Testing Weld Integrity”.5 The 447 Patent is a continuation-in-part of the 322
Patent. Accordingly, the specification for the 447 Patent was "borrowed" from the 322 Patent
and, unless specifically noted, contains the same, or substantially the same, language.
Both Patents in suit relate to apparatuses and methods for testing the integrity of welds
used to attach lifting points, such as pad eyes, lifting lugs or other lifting devices, to structures
intended to be lifted. Typically, these structures are large cargo or shipping containers and
oilfield or offshore drilling equipment. The apparatuses are portable, self-contained, easily
transportable and the method of testing is non-destructive. Both employ one or more hydraulic
cylinders to apply a non-destructive test force to the pad eye or lifting lug welded to the
structure to be lifted which mimics the forces on the attachment weld that occur during lifting.
After application of the test force, the pad eye and welding are examined for defects and
deformities.
The 322 Patent contains twenty-one claims. Claims 1, 13, 20, and 21 are independent
claims and the remaining seventeen claims are dependent claims. The 447 Patent, as originally
issued, contained 31 claims and, after reexamination and reissuance, contains 30 claims, claim
29 having been canceled. Claims 1, 14, 27 and 30 are independent claims and the remaining
claims are dependent claims.

5

The numbers cited in this Ruling refer to the numbers assigned to specific named parts of the
inventions set forth in the illustrations and figures of the 322 and 447 Patents.

3

Legal Standard on Claim Construction
A patent describes “the exact scope of an Invention and its manufacture to ‘secure to
[the patentee] all to which he is entitled, [and] to apprise the public of what is still open to
them.’” Markman v. Westview Instruments, Inc., 517 U.S. 370, 373, 116 S.Ct. 1384, 134
L.Ed.2d 577 (1996) (citation omitted). Indeed, “it is only fair (and statutorily required) that
competitors be able to ascertain to a reasonable degree the scope of the patentee’s right to
exclude.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (5th Cir. 1995) ( en banc ),
aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996). The claims of a patent define the patented
invention to which the patentee is entitled the right to exclude. Markman, 517 U.S. at 373-374;
Phillips 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
alleged 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
of any disputed terms and limiting expressions in the claims are determined by the court as a
matter of law. Vivid Technologies, Inc. v. American Science & Engineering, Inc., 200 F.3d
795, 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
those terms need be construed that are in controversy, and only to the extent necessary to
resolve 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

4

disputed meanings”).
“The words of a claim ‘are generally given their ordinary and customary meaning.’”
Phillips, 415 F.3d at 1312 quoting Vitronics, 90 F.3d at 1582. “The 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, that is, as of the effective filing date of the
patent application.” Phillips, 415 F.3d. at 1313. This “person of ordinary skill in the art is
deemed to read the claim term not only in the context of the particular claim in which the
disputed term appears, but in the context of the entire patent . . . . ” Id.
For certain claim terms, “the ordinary meaning of claim language as understood by a
person of skill in the art may be readily apparent even to lay judges, and claim construction in
such cases involves little more than the application of the widely accepted meaning of
commonly understood words.” Phillips, 415 F.3d at 1314 citing Brown v. 3M, 265 F.3d 1349,
1352 (Fed. Cir. 2001).
For other claim terms, however, the meaning of the claim language may be less
apparent. To construe those terms, the court considers “‘those sources available to the public
that show what a person of skill in the art would have understood disputed claim language to
mean . . . [including] the words of the claims themselves, the remainder of the specification,
the prosecution history, and extrinsic evidence concerning relevant scientific principles, the
meaning of technical terms, and the state of the art.’” Id. quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004).

5

“[T]here 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
sources in any specific sequence. Phillips, 415 F.3d at 1324 (citations omitted). However, the
court must assign the appropriate weight to each source consulted. Id.
Intrinsic evidence of record consists of “the patent itself, including the claims, the
specification and, if in evidence, the prosecution history.” Vitronics Corp., 90 F.3d at 1582
citing Markman, 52 F.3d at 979. The Federal Circuit has repeatedly emphasized the primary
importance of intrinsic evidence in claim construction, deeming intrinsic evidence “the most
significant source of the legally operative meaning of disputed claim language.” Vitronics
Corp., 90 F.3d at 1582; 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.” Phillips,
415 F.3d at 1317 citing Markman, 52 F.3d at 980. "Extrinsic evidence can help educate the
court regarding the field of the invention and can help the court determine what a person of
ordinary skill in the art would understand claim terms to mean . . . ." Id. at 1319.
Accordingly, extrinsic evidence may be admitted and used by the Court in claim
construction. Id. However, such evidence is “less significant than the intrinsic record in
determining the legally operative meaning of claim language.” Id. at 1317 (internal quotations
and citation omitted). This is so because, in general, extrinsic evidence is less reliable than

6

intrinsic evidence in determining how to read claim terms.6 Id. at 1318-1319.
Moreover, intrinsic evidence constitutes “the public record of the patentee’s claim, a
record on which the public is entitled to rely” in ascertaining the scope of the patentee's
claimed invention to design around it. Vitronics Corp., 90 F.3d at 1583. Allowing the public
record to be altered or changed by extrinsic evidence would make this right meaningless. Id.
Within the class of intrinsic evidence, the claims themselves provide substantial
guidance as to the meaning of particular claim terms. Phillips, 415 F.3d at 1314 citing
Vitronics, 90 F.3d at 1582 and ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
2003) (“the context of the surrounding words of the claim also must be considered in
determining the ordinary and customary meaning of those terms”).
In the absence of modifiers, general descriptive terms are typically construed as having
their full meaning. Innova/Pure Water, Inc., 381 F.3d at 1118. The context in which a term is
used in the asserted claim can be highly instructive. Phillips, 415 F.3d at 1314. Other claims
of the patent in question, both asserted and unasserted, can also be valuable sources of
enlightenment as to the meaning of a claim term. Id. citing Vitronics, 90 F.3d at 1582. Because
6

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 the specification's virtue of being created at the time of patent prosecution
for the purpose of explaining the patent's scope and meaning”, (2) “extrinsic publications may not be
written by or for skilled artisans and therefore may not reflect the understanding of a skilled artisan in the
field of the patent”, (3) “extrinsic evidence consisting of expert reports 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 some marginal
relevance that could be brought to bear on any claim construction question [and] each party will naturally
choose the pieces of extrinsic evidence most favorable to its cause” and (5) “undue reliance on extrinsic
evidence poses the risk that it will be used to change the meaning of claims in derogation of the
‘indisputable public records consisting of the claims, the specification and the prosecution history,’
thereby undermining the public notice function of patents. Id. at 1318-1319.

7

claim terms are normally used consistently throughout the patent, the usage of a term in one
claim can often illuminate the meaning of the same term in other claims. Id. citing Rexnord
Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) and CVI/Beta Ventures, Inc. v.
Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997).
Differences among claims can also be a useful guide in understanding the meaning of
particular claim terms. Id. citing Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed.
Cir. 1991). For example, the doctrine of claim differentiation creates a presumption that each
claim in a patent has a different scope. SunRace Roots v. Enterprise Co., Ltd. v. SRAM Corp.,
336 F.3d 1298, 1302 (Fed. Cir. 2003); Wenger Mfg. v. Coating Machinery Systems, Inc., 239
F.3d 1225, 1234 (Fed. Cir. 2001). Thus, the presence of a dependent claim that adds a
particular limitation gives rise to a presumption that the limitation in question is not present in
the independent claim. Phillips, 415 F.3d at 1315 citing Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 910 (Fed. Cir. 2004). This presumption is strongest when the limitation in
dispute 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
written instrument,” consisting principally of a specification that concludes with the claims. For
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 claim
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 be
8

based on the description [in the specification] . . .” and, hence, the specification is “the best
source 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
1478 and Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir.
2004).
The importance of the specification in claim construction derives from its statutory role.
The close kinship between the written description and the claims is enforced by the statutory
requirement that the specification describe the claimed invention in “full, clear, concise, and
exact terms.” Phillips, 415 F.3d at 1316 citing 35 U.S.C. § 112, ¶ 1. Consistent with that
general 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
cases, the inventor's lexicography governs. Id. In other cases, the specification may reveal an
intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the
inventor has dictated the correct claim scope, and the inventor's intention, as expressed in the
specification, is regarded as dispositive. Id. For example, where the patent criticizes a feature
of prior products, such criticism operates as a clear disavowel of that feature. Astrazeneca AB,
et al. v. Mutual Pharmaceutical Company, Inc., 384 F.3d 1333, 1340 (Fed. Cir. 2004).
The patentee’s choice of preferred embodiments can shed light on the intended scope of
the claims.7 Astrazeneca AB, 384 F.3d at 1340. However, “particular embodiments appearing

7

In Phillips, the Federal Circuit explained that “[o]ne of the best ways to teach a person of
ordinary skill in the art how to make and use the invention is to provide an example of how to practice
the invention in a particular case. Much of the time, upon reading the specification [keeping in mind that

9

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
supported by the specification in the manner required by [the Patent Act].” Specialty
Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed. Cir. 1988) (citations omitted); Phillips,
415 F.3d at 1323.
The Federal Circuit has “expressly rejected the contention that if a patent describes only
a single embodiment, the claims of the patent must be construed as being limited to that
embodiment.” Phillips, 415 F.3d at 1323 citing Gemstar-TV Guide, 383 F.3d at 1366. Thus,
“even where a patent describes only a single embodiment, claims will not be ‘read restrictively
unless the patentee has demonstrated a clear intention to limit the claim scope using words or
expressions of manifest exclusion or restriction.’” Innova/Pure Water, Inc., 381 F.3d at 1117
citing Liebel-Flarsheim, 358 F.3d at 906 quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299
F.3d 1313, 1327 (Fed. Cir. 2002).
The prosecution history, which is likewise designated as part of the intrinsic evidence,
should be considered by the court, if it is in evidence. Phillips, 415 F.3d at 1317 citing
Markman, 52 F.3d at 980, Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 15 L.Ed.2d
545 (1966) (“[A]n invention is construed not only in the light of the claims, but also with
reference to the file wrapper or prosecution history in the Patent Office.”). The prosecution

the 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], it will become clear whether the patentee is setting
out specific examples of the invention to accomplish those goals, or whether the patentee instead intends
for the claims and the embodiments in the specification to be strictly coextensive.” Phillips, 415 F.3d at
1323 (citations omitted).

10

history consists of the complete record of the proceedings before the PTO and includes the
prior 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
understanding the claims.” Markman, 52 F.3d at 980 citing Autogiro, 384 F.2d at 397. Thus,
the “court has broad power to look to the prosecution history of the patent in order to ascertain
the true meaning of the language used in the patent claims.” Id. However, because the
prosecution history represents an ongoing negotiation between the PTO and the applicant,
rather than the final product of that negotiation, it often lacks the clarity of the specification and
thus is less useful for claim construction purposes. Id. at 1317 (citations omitted).
Certain claims may also use functional language and therefore be subject to "meansplus-function" construction pursuant to § 112(f).8 To determine whether § 112(f) applies, the
Federal Circuit has long recognized the importance of the presence or absence of the word
“means.” Williamson v. Citrix Online, LLC, - - F.3d - -, 2015 WL 3686459, *6 (Fed. Cir.
2015).
If a claim element contains the word “means” and recites a function, a rebuttable
presumption arises that § 112(f) applies. Id. citing Personalized Media Communications, LLC
v. International Trade Commission, 161 F.3d 696, 703-704 (Fed. Cir. 1998) (citing cases);
Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000); Apex Inc. v.
8

35 U.S.C. § 112(f) provides as follows:
(f) Element in claim for a combination. – An element in a claim for a combination may
be expressed as a means or step for performing a specified function without the recital of
structure, material, or acts in support thereof, and such claim shall be construed to cover
the corresponding structure, material, or acts described in the specification and
equivalents thereof.

11

Raritan Computer, Inc., 325 F.3d 1364, 1371-1372 (Fed. Cir. 2003). The presumption can be
overcome "if the claim itself recites sufficient structure to perform the claimed function."
Envirco Corp., 209 F.3d at 1364. The essential inquiry is "whether the words of the claim are
understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the
name for structure." Greenberg v. Ethicon Endo–Surgery, Inc., 91 F.3d 1580, 1583, 39
USPQ2d 1783, 1786 (Fed. Cir. 1996); Apex, 325 F.3d at 1372 (noting that the inquiry is
whether the “term, as the name for the structure, has a reasonably well understood meaning in
the art”).
Applying the converse, the failure to use the word “means” creates a rebuttable
presumption that § 112(f) does not apply.9 Williamson, - - F.3d - -, 2015 WL 3687459 at *6; Apex
Inc., 325 F.3d at 1371-1372. When a claim term lacks the word “means,” the presumption can be

overcome, and § 112(f) will apply, if the challenger demonstrates that the claim term fails to
“recite[ ] sufficiently definite structure” or else recites “function without reciting sufficient
structure for performing that function.” Williamson, - - F.3d - -, 2015 WL 3687459 at *7 citing
Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000); Apex, 325 F.3d at 1372.
Thus, "when it is apparent that the element invokes purely functional terms, without the
additional recital of specific structure or material for performing that function, the claim
element may be a means-plus-function element despite the lack of express means-plus-function

9

The Federal Circuit recently has expressly overruled cases which describe the characterization
of the presumption in cases without the word "means" as “strong”and those which employ a heightened
burden requiring “a showing that the limitation essentially is devoid of anything that can be construed as
structure.” Williamson, - - F.3d - -, 2015 WL 3687459 at *7.

12

language." Al-Site Corp. v. VSI Intern, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999). Moreover,
while the word "means" may not appear in a claim, generic terms and other "nonce words" that
reflect nothing more than verbal constructs may be used in a manner that can operate as a
substitute for the word “means” because they “typically do not connote sufficiently definite
structure”; the use of these terms may therefore rebut the presumption and invoke § 112(f).
Williamson, - - F.3d - -, 2015 WL 3687459 at *9.
The burden to overcome the presumptions for and against the application of § 112(f)
must be met by a preponderance of the evidence. Apex, Inc., 325 F.3d at 1372. If the party
who must bring forth evidence fails to proffer sufficient evidence to meet its burden, the
presumption, either for or against the application of § 112(f), prevails. Id.
Once the court has found that a claim is in means-plus-function form, the court then
construes the claim term utilizing a two-step process. The court must first identify the claimed
function. Williamson, - - F.3d - -, 2015 WL 3687459 at *9. Then, the court must determine what
structure, if any, disclosed in the specification performs the claimed function. Id. The
“specification must be read as a whole to determine the structure capable of performing the
claimed function.” Chicago Bd. Options Exchange, Inc. v. International Securities Exchange,
LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012).10

10

In exchange for being able to draft a claim limitation in purely functional language, “[t]he
applicant must describe in the patent specification some structure which performs the specified
function.” Noah Systems, Inc. v. Intuit, Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012) quoting Valmont
Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042 (Fed. Cir. 1993). "And, importantly, the functional
claim language covers only 'the corresponding structure, material, or acts described in the specification
and equivalents thereof.’ ” Id. (citations omitted). "Requiring the disclosure of a corresponding structure,
thus, confines the breadth of protection otherwise permitted by purely functional claiming." Id. (internal
quotations and citations omitted).

13

The court should not adopt a function different from that explicitly recited in the claim.
Micro Chemical, inc. v. Great Plains Chemical Co., Inc., 194 F.3d 1250, 1258 (Fed. Cir.
1999). Nor should the court incorporate structure from the written description beyond that
necessary to perform the claimed function. Id. Structure disclosed in the specification qualifies
as “corresponding structure” if the intrinsic evidence clearly links or associates that structure to
the function recited in the claim. Williamson, - - F.3d - -, 2015 WL 3687459 at *10. Moreover,
the corresponding structure must be “adequate” to achieve the claimed function. Id. Stated
differently, a person of ordinary skill in the art must be able to recognize the structure in the
specification and associate it with the corresponding function in the claim. Id.
Within the class of extrinsic evidence, the Federal Circuit has observed that
dictionaries can be useful in claim construction. Phillips, 415 F.3d at 1318 citing Renishaw,
158 F.3d at 1250 and Rexnord, 274 F.3d at 1344. Dictionaries or comparable sources are often
useful to assist in understanding the commonly understood meaning of words in claim
interpretation. Id. at 1322 citing Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 134,
62 S.Ct. 513, 86 L.Ed. 736 (1942), Weber Elec. Co. v. E.H. Freeman Elec. Co., 256 U.S. 668,
678, 41 S.Ct. 600, 65 L.Ed. 1162 (1921), Renishaw, 158 F.3d at 1247-53 (approving the use of
dictionaries with proper respect for the role of intrinsic evidence).
Likewise, technical dictionaries may help a court “to better understand the underlying
technology and the way in which one of skill in the art might use the claim terms.” Id. at 1318
citing Vitronics, 90 F.3d at 1584 n. 6. Because “dictionaries, and especially technical
dictionaries, endeavor to collect the accepted meanings of terms used in various fields of
14

science and technology, those resources have been properly recognized as among the many
tools that can assist the court in determining the meaning of particular terminology to those of
skill in the art of the invention.” Id. citing Teleflex, Inc., 299 F.3d at 1325.
Such evidence, “may be considered if the court deems it helpful in determining ‘the true
meaning of language used in the patent claims.’” Id. citing Markman, 52 F.3d at 980. In sum,
“judges are free to 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 . . . .” Id. at 1322.
However, given the primary importance of intrinsic evidence, the court’s consultation
and reliance on dictionaries and technical treatises is limited to the extent that “the dictionary
definition does not contradict any definition found in or ascertained by a reading of the patent
documents.” Id. at 1322-1323 citing Vitronics, 90 F.3d at 1584 n. 6.
In addition, a court in its discretion may rely on prior art proffered by one of the parties.
Vitronics, 90 F.3d at 1584. This prior art can often help to demonstrate how a disputed term is
used by those skilled in the art and what those skilled in the art generally believe a certain term
means. Id. Prior art evidence is useful “to show what was then old, to distinguish what was
new, and to aid the court 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 category of intrinsic evidence,
while prior art not considered by the examiner is extrinsic evidence. Tate Access Floors, Inc. v.
Interface Architectural Resources, Inc., 279 F.3d 1357, 1372 fn. 4 (Fed. Cir. 2002). As with
15

other types of extrinsic evidence, prior art not considered by the examiner is afforded less
weight and, accordingly, should not be used to contradict claim meaning that is unambiguous in
light of the intrinsic evidence. See Phillips, 415 F.3d at 1319 and 1324.
Construction of Claim Terms
Pad Eye and Lifting Lug
Scarborough proposes the following construction for "Pad Eye": “an attachment point
welded to a structure to be lifted, through which a line or pin can be placed.”
Scarborough proposes the following construction for "Lifting Lug": “an attachment
point welded to a structure to be lifted.”
Integricert proposes the following construction for both terms: “a device attached as an
attachment point to another device.”
For the following reasons, the Court adopts Scarborough’s constructions of both terms
in their entirety as those constructions are consistent with the intrinsic evidence, accords the
terms their ordinary meanings and appropriately differentiates the terms which are consistently
used in proximity to each other throughout the claims and the specifications.
Integricert argues that each term should be construed identically, presumably on grounds
that they are both "lifting connections", which is not a claim term, and that both are allegedly
used throughout the claims interchangeably. This argument ignores the fact that these terms in
the claims and the specifications of each Patent are consistently listed in the alternative, with
the use of the disjunctive "or", thereby signifying that the terms do not carry the same meaning.

16

Furthermore, this argument is inconsistent with Integricert's agreement with
Scarborough that a "pad eye" is a subset of "lifting lug", thereby apparently acknowledging that
the term "lifting lug" carries a broader definition than that to be accorded to "pad eye." Finally,
this argument ignores the fact that these terms are used in proximity to each other, thereby
creating an inference that the terms are intended to have different meanings.
For those reasons more fully set forth in this Court's Reasons for Ruling on the CrossMotions for Partial Summary Judgment on whether Integricert is entitled to application of the
doctrine of absolute intervening rights, the Court agrees with Scarborough that the Patents, read
in light of the claims and specification as a whole, describe "pad eye[s]" and "lifting lug[s]" as
attachment points for lifting equipment or structures on, or in which, equipment is
transported.11
For those reasons set forth in the Reasons for Ruling on the Cross-Motions for Partial
Summary Judgment, it is also clear from the claims and specifications of the Patents that the

11

See e.g. rec. doc. 122-17 at 1:5-8; rec. doc. 122-19 at 1:11-15 (Area of Technology/Field of
Invention stating the claimed "apparatus relates, generally, to non-destructive testing of weld integrity
and strength in the attachment weld of pad eyes and other lifting lugs."); Id. at 1:21-28; Id. at 1:29-36; Id.
at 1:54-59; Id. at 1:62 - 2:1 (Background of Invention/ Description of the Related Art explaining that
"[p]ad eyes and lifting lugs are primarily used as an attachment point for any rigging employed to hoist,
transport, or secure heavy equipment" and that "[t]hese pad eyes are typically welded either to the
equipment or to some device on which the equipment is transported on . . . ", but that under prior art
"[t]he strength of these welds cannot be easily tested . . . ." Therefore, it was Scarborough's desire to
create "a testing apparatus which is portable and can quickly and accurately check the integrity of a pad
eye and its attachment weld before each field use . . . ."); see also rec. doc. 135-2, pg. 78 (statement by
Scarborough to the Examiner during the initial 2006 prosecution of the 447 Patent that unlike the Hodo
device, his "device is used to determine the integrity of the attachment weld to determine if some
apparatus, to which the test piece is attached, can be safely lifted while carrying some pre-determined
load."); rec. doc. 138-1 (Scarborough's initial submission in the 447 Patent reexamination repeatedly and
consistently describing his invention as an apparatus and method which non-destructively tests the
strength and integrity of attachment welds, which attach pad eyes or lifting lugs to another base structure
to be lifted).

17

referenced "pad eye[s]" and "lifting lug[s]"must be welded to the equipment or to the structure
to be lifted. Without this requirement, it would not be possible for the claimed inventions to
test the integrity of a weld attaching these lifting points to the equipment or structure to be
lifted.12 Stated differently, the attached lifting points must be welded to the object to be lifted
in order to create the opportunity to test the weld strength and integrity, which is the stated
purpose of each Patent.13 Integricert's proposed definition fails to acknowledge this obvious
requirement and thereby ignores the purpose of the inventions.
Integricert's proposed definition of "pad eye" also ignores the "eye" portion of the term.
In essence, Integricert "reads out" the requirement that a "pad eye" has an "eye." The proposed
definition also fails to afford the term its ordinary, customary and widely accepted meaning
understood by one of ordinary skill in the art, as well as lay persons unskilled in the art. See
Phillips, 415 F.3d at 1314 citing Brown, 265 F.3d at 1352. An "eye" in this context necessarily
denotes an interior hole or opening for receiving a line or pin.14 Indeed, element 19 of both
Patents depicts an exemplary "pad eye" which includes such a hole, and this element, 19, is

12

See e.g. Claim 1 of each Patent, rec. doc. 122-17 at 9:46-50 and rec. doc. 122-19 at 12:43-26.

13

See e.g. Title "Apparatus and Method for Testing Weld Integrity"; Area of Technology/Field of
Invention, cited supra. at fn. 11; Background of Invention/ Description of the Related Art cited supra. at
fn. 11
14

The term "eye" is defined by Webster's Online Dictionary as "A small hole or loop (as in a
needle); "the thread wouldn't go through the eye", and "A loop forming part of anything, or a hole
through anything, to receive a rope, hook, pin, shaft, etc.; as an eye at the end of a tie bar in a bridge
truss; as an eye through a crank; an eye at the end of rope." www. Websters-online-dictionary.org;
http://www.totodefinition.com/search.php?word=eye

18

consistently described as different than other types of lifting connections.15
Moreover, to adopt Integricert's proposed same definition for both terms would fail to
give meaning to all terms in the claims, which is the preferred construction over those which do
not. See Merck & Company, Inc. v. Teva Pharmaceuticals USA, Inc., 395 F.3d 1364, 1372
(Fed. Cir. 2005). Both terms are repeated throughout the claims and the specifications; thus,
construing the terms differently as proposed by Scarborough avoids rendering either term mere
excess verbiage. See Id.
Finally, because "pad eye" is a subset of "lifting lug", the term "lifting lug" necessarily
carries a broader definition than that to be accorded to "pad eye." In this context, the difference
is apparent. A "pad eye", like a "lifting lug", is an attachment point for lifting, but unlike a
"lifting lug", a "pad eye" contains an "eye", that is, an interior hole or opening for receiving a
line or pin. Thus, "pad eye" is a narrower and more specific type of "lifting lug."
Scarborough's proposed construction appropriately accounts for this distinction, thereby
properly differentiating the claims terms.
Non-Destructive(ly)16
Scarborough proposes the following construction for "Non-Destructive(ly)": “wherein
the test piece remains intact and usable.”

15

See Id. at 2:59 and 66, Id. at 3:13 and 20-21 ("pad eye 19 or lifting lug" and "pad eye 19, lifting
lug, or other lifting connection").
16

The Claims contain several variations of the disputed term including "non-destructive", "nondestructive manner" and "non-destructively". The parties have agreed that these terms are equivalent.

19

Integricert proposes the following construction "Non-Destructive(ly)": “testing that
does not damage or destroy.”
For the following reasons, the Court accepts neither proposal, but rather adopts the
following construction: “wherein the test piece is not inherently damaged or destroyed through
removal or disassembly for testing and therefore remained intact and usable following testing."
This construction is consistent with the original prosecution history of the Patents and is
consistent with the claims and specifications in the Patents, thereby correctly stating what a
person of ordinary skill in the art would understand the term to mean.
Both Scarborough and Integricert agree as to the importance of the original prosecution
history in construing this term. They disagree, however, on the proper interpretation of that
history. The Court largely agrees with the interpretation and construction proposed by
Scarborough, but with the above modifications.
During the original 2004 prosecution of the 322 Patent, the Examiner rejected several of
Scarborough's claims as anticipated by Gram. [rec. doc. 135-1 at 32]. In response, Scarborough
amended several of his claims, and explained why his claims, as amended, were patentable
over the Gram device, stating that the claims were amended "to reflect, as per the specification,
that the testing to be performed by the invention in question is nondestructive and that the
testing on the test piece is done substantially external to the testing apparatus." Gram, on the
other hand, utilizes testing techniques "that are destructive in nature" and "requires that the
piece, to be tested, is removed from its original location and placed into the Gram testing

20

apparatus", whereas Scarborough's invention "does not require the removal of a representative
piece of the test subject from the body of the test subject . . . .", but rather "attaches . . . external
to the pad eye and does not damage or destroy the testing piece." [Id. at 25].
Scarborough's distinguishing the Gram Patent was therefore the inherent destructive
nature of the Gram testing as a result of the need to remove the pad eye from the body of the
test piece to place it into the Gram apparatus, thereby damaging and destroying the test piece.
Scarborough's device on the other hand allows a properly welded test piece to remain intact and
useable following testing.
Similarly, in his initial 2006 prosecution of the 447 Patent, the Examiner rejected several
of Scarborough's claims as anticipated by Hodo. [rec. doc. 135-2 at 83-84]. In response,
Scarborough amended several of his claims, and explained why his claims, as amended, were
patentable over the Hodo device, stating that "[i]n sharp contrast [to Scarborough's device], the
Hodo device is a fatigue testing device which inherently destroys the test piece in order to
determine the fatigue strength of the material. Further, the Hodo device requires for the test
piece to be inserted into the Hodo structure and then it is basically pulled apart."
Unlike the Hodo device, Scarborough explained that his "device is for non-destructively
testing the weld strength . . . and does not require any substantial disassembly of the piece to be
tested . . . to determine the integrity of the attachment weld to determine if some apparatus, to
which the test piece is attached, can be safely lifted while carrying some pre-determined load.
Thus, if a weld fails while being tested with the [Scarborough] device it is known that the

21

apparatus and the attached test piece must be repaired. However, it would frustrate the purpose
of testing, by [Scarborough's] device, should the test piece, to which the [Scarborough] device
is attached, be destroyed each and every time as is the purpose of Hodo . . . ." [rec. doc. 135-2,
pg. 78].
Thus, as was the case with the Gram device, Scarborough's reasoning for distinguishing
the Hodo Patent was, again, the inherent destructive nature of the Hodo testing as a result of the
need to remove the test piece from the body of the lifted object to place it into the Hodo
apparatus, thereby damaging and destroying the test piece.17 Scarborough's device on the other
hand allows a properly welded test piece to remain intact and useable following testing.
These considerations are reflected in the specifications of the Patents wherein
Scarborough distinguishes his inventions over prior art on grounds that the prior art "utilizes a
method of destructive testing which would render the pad eye useless", but that his apparatus
"check[s] the integrity of a pad eye and its attachment weld before each field use." [rec. doc.
122-17 at 1:32-34 and 54-56; rec. doc. 122-19 at 1:41-43 and 63-65]. The Court’s construction
takes into account the concept that a properly welded test piece remains intact and usable
following Scarborough testing.
While Integricert quotes portions of the prosecution history cited above, it omits from
its discussion those statements which set forth one of the primary distinguishing factors cited
by Scarborough, that is, that the test piece is not inherently damaged or destroyed by removal or
17

The parties do not appear to dispute that because the 447 Patent is a continuation-in-part of the
322 Patent, the prosecution history of the 322 Patent is incorporated into the 447 Patent.

22

disassembly and placement in the testing device. Integricert's proposed definition therefore
fails to adequately acknowledge that a properly welded test piece will remain intact and usable
following testing.
On the other hand, Scarborough's proposed definition ignores the possibility that the
testing may result in damage or destruction of the test piece in instances where the weld fails,
thereby signifying that the weld must be repaired. This possibility is incorporated into the
methodology, wherein it is claimed the "testing technician or test operator" can inspect the
lifting connection and its attachment weld "for any structural damage or deformation." See
Claims 13, 20 and 21 of the 322 Patent and Claims 14 and 2718 of the 447 Patent.
The Court's construction adequately accounts for all of these concepts and possibilities,
thereby correctly stating what a person of ordinary skill in the art would understand the term to
mean.
Attachment Means/Fluid Attachment Means (or Apparatus)19
Scarborough argues that means-plus-function construction applies and therefore
proposes the following construction for "Attachment Means/Fluid Attachment Means (or
Apparatus)": “means-plus-function term encompassing pressure containing hoses, cylinder

18

Claim 27 reads "damage or deformation."

19

The phrase "fluid attachment means" appears in Claims 7 and 9 of the 322 Patent; the phrase

"attachment means" appears in Claims 13 and 18 of the 322 Patent and the phrases "fluid attachment
apparatus" and "attachment apparatus" appear in claims 6 and 14 of the 447 Patent, respectively. The
parties agree that these terms are equivalent to each other and should therefore be construed in the same
manner.

23

fittings, pressure containing fittings, manifold fittings, pump fittings, and any equivalents
thereto.”
Integricert argues that means-plus-function construction should not apply and proposes
the following construction for "Attachment Means/Fluid Attachment Means (or Apparatus)":
“a fitting for attaching fluid lines to the cylinders.”
For the following reasons, the Court finds that the disputed claim term is in means-plusfunction form, reciting a function in the claims without sufficient structure to perform the
claimed function and therefore adopts Scarborough’s construction in its entirety as that
construction properly identifies the structures disclosed in the specifications which perform the
claimed function.
The disputed phrases contain the term "means" in association with a function.20
Accordingly, the rebuttable presumption that the phrase be construed as a means-plus-function

20

Claim 7 of the 322 Patent provides in pertinent part, "[t]he apparatus of claim 1, wherein the
cylinder further comprises: a first and second end; . . . first and second pressurized fluid attachment
means; wherein said first pressurized attachment means is disposed axially between said cylinder first
end and said piston; wherein said second pressurized fluid attachment means is disposed axially between
said cylinder second end and said piston; wherein pressurized fluid enters said cylinder through said first
attachment means or second attachment means."
Claim 9 of the 322 Patent provides in pertinent part: "[t]he apparatus in claim 1, further
including: a control means for allowing pressurized fluid to be alternately supplied to and exhausted from
said cylinder . . . when the pressurized fluid enters through said first pressurized fluid attachment means,
and . . . when the pressurized fluid enters through said second pressurized fluid attachment means.
Claim 13 of the 322 Patent provides in pertinent part: [a] method for testing weld strength and
integrity of an attachment weld . . . providing at least one fluid cylinder, having a first end and a second
end . . . providing a first and second attachment means, wherein a pressurized fluid can enter in or
exhaust from said cylinder . . . "
Claim 18 of the 322 Patent provides in pertinent part: "[t]he method in claim 17, wherein: said
cylinder piston moves . . . when said pressurized fluid enters said cylinder through said first attachment
means and the piston moves . . . when said pressurized fluid enters said cylinder through said second
attachment means . . . ."

24

term under § 112(f) arises.
While Integricert argues that the claims sufficiently describe structure, the Court
disagrees. Examination of the Claims reveals no sufficiently identified fluid attachment
structure.21 Moreover, the Court cannot find on the record before this Court that the words of
the claims may be understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure. To the contrary, the claims recite "attachment
means" and "fluid attachment means" without reciting any specific fluid attachment structure.
As such, Integricert has not overcome the presumption that § 112(f) applies. The Court
therefore must apply the two-step process to construe the claim term.
The function identified in the claims which is accorded to the "fluid attachment means"
is to provide a connection to a cylinder whereby pressurized fluid can enter in, or exhaust from,
a cylinder. See e.g. Claims 7, 9, 18 and 18 of the 322 Patent. Simply stated, the function to be
accomplished is a means to attach a source of pressurized fluid to a cylinder.
The structures disclosed in the specification that corresponds to this function must next
be identified. Scarborough cites the structures and identifies the portions of the Detailed
Description of an Embodiment of the Present Apparatus. The cited portions describe the
apparatus as having a "flow control manifold 50 [which] is preferably connected to the upper 7
and lower 7a cylinder fittings by means of pressure containing hoses." [rec. doc. 122-17 at 7:35; see also 122-19 at 8:57-59]. The cited portion further explains the connections in detail as

21

See fn. 20, supra.

25

follows:
In addition, a pressure containing hose is connected to each of the cylinder
fittings 7 and 7A on the cylinders 5. The other end of each pressure containing
hose is connected to the flow control manifold 50. The preferred embodiment
utilizes 'quick connect' connectors for the pressure containing fittings, however,
other types of pressure containing fittings may be utilized. Preferably, the
cylinder fittings 7 and 7A, the manifold fittings 81, and the pump fittings 73 are
all male "quick connect" pressure containing fittings. Each pressure containing
hose is preferably comprised of some length of hydraulic quality hose with a
female 'quick connect' fitting on each end. The pressure containing hose will have
a pressure rating which exceeds the pressure required for the testing. Another set
of the above described pressure containing hoses is connected between the flow
control manifold 50 and the hand pump 40. It should be understood that the
exact sequence and location of connections of the pressure containing hoses may
vary depending on the version of the testing apparatus as well as the type and
model of pump and flow control manifold.
[Id. at 7:51-8:4; Id. at 9:39-59].
Based on the above, the Court agrees with Scarborough that the structures disclosed in
the Patent specifications as able to perform the claimed fluid connection function include
pressure containing hoses, pressure containing fittings, cylinder fittings, manifold fittings and
pump fittings, as well as any equivalents thereto. While Integricert argues that including all of
these items "sweeps too broadly" and instead should include only cylinder fittings, the Court
disagrees. The portions of the Patents cited above contain clear references to structures besides
cylinder fittings able to perform the claimed fluid connection function. Further, all of these
structures either achieve the claimed function or may easily be linked or associated with that
function by a person of ordinary skill in the art. See Williamson, - - F.3d - - , 2015 WL 3686459

26

at *10.22
Attachment Structure
Scarborough argues that means-plus-function construction applies and proposes the
following construction for "Attachment Structure": “means-plus-function term encompassing
pinned connections, threaded fasteners, taper pins, welding, cable assemblies, footings and
attachment plates, clamps and any equivalents thereto.”
Integricert argues that means-plus-function construction should not apply and proposes
the following construction for "Attachment Structure": “any device for attaching a testing
apparatus to a test piece which provides adequate support and connection.”
For the following reasons, the Court finds that the disputed claim term is in means-plusfunction form, reciting a function in the claims without sufficient structure to perform the
claimed function and therefore adopts Scarborough’s construction in its entirety as that
construction properly identifies the structures disclosed in the specifications which perform the
claimed function.
The disputed phrase does not contain the term "means". Accordingly, a rebuttable
presumption that the phrase not be construed as a means-plus-function term under § 112(f)
arises.

22

Although the parties have agreed the term "fluid attachment apparatus" and "attachment
apparatus" in claims 6 and 14 of the 447 Patent be construed the same, the Court nevertheless notes that
these terms are likewise drafted in a format consistent with traditional means-plus-function claim
limitations. The term "apparatus" replaces the term “means” but recites the same function performed by
the “attachment means" and "fluid attachment means" set forth in the claims of the 322 Patent, and the
claims disclose no sufficiently identified fluid attachment structure to perform the claimed function.

27

Scarborough argues, however, that the phrase fails to recite definite structure and, to the
contrary, recites function without reciting sufficient structure for performing that function. The
Court agrees. Examination of the phrase in the Claims reveals that the phrase is written in
purely functional terms with no sufficiently identified attachment structure for performing the
recited function.23 See Al-Site Corp., 174 F.3d at 1308. To the contrary, the claims recite
"attachment structure" without reciting any specific attachment structure means that would
attach the claimed apparatus externally to a pad eye, lifting lug or other lifting device to be
lifted. As such, Scarborough has overcome the presumption that § 112(f) does not apply. The
Court therefore must apply the two-step process to construe the claim term.
The function of the "attachment structure" identified in the claims is for releaseably or
permanently attaching the testing apparatus externally to a pad eye, lifting lug or other device.
See fn. 23, infra.. Simply stated, the function to be accomplished is a means to attach the
claimed testing device to a pad eye, lifting lug or other device attached to another structure to
be lifted.
The structures disclosed in the specification that corresponds to this function must next
be identified. Scarborough cites the structures and identifies the portions of the Detailed

23

Claim 1 of the 447 Patent as amended includes the limitation "an attachment structure for
attaching to a pad eye or other device joined by the at least one attachment weld to another structure."
[rec. doc. 106-2, at 1:29-31]. Claim 14 similarly states "providing an attachment structure for attaching
to said pad eye, lifting lug or other device joined to said another structure . . . ." [Id. at 2:4-6].
The phrase appears in Claims 13 and 21 of the 322 Patent as amended as "providing an
attachment structure for attaching externally to said pad eye, lifting lug or other device joined to said
another structure . . . ", in Claim 20 as "providing an attachment structure for attaching external to said
test piece . . . " and in Claim 1 as " structure for releaseably or permanently attaching to a pad eye, lifting
lug or other device joined by the attachment weld to another structure . . . ." [rec. doc. 106-1, at 2:42-44;
4:19-21; 3:30-31; 1:29-31].

28

Description of an Embodiment of the Present Apparatus. The cited portions describe the types
of attachment structures which can accomplish this function as follows:
Both the cylinder shaft 13 and the bottom adaptor 15 are adapted to allow
connection to a mating part preferably utilizing a pin connection. It should be
appreciated that although the present device contemplates primarily pinned
connections, other methods of attachment can also be used. Examples of such
attachments include, but are not limited to: various threaded fasteners, taper pins,
welding and the like. The figures illustratively show two types of pins 39, 41.
However, these pins can be substituted by a variety of other attachment methods
as mentioned above. The cylinder shaft 13 is sandwiched between and
connected, by a pin 41, to the two bridge plates1. The bottom adaptor 15 is
connected by a pin 41 and sandwiched between the attachment plates 17 . . .
[122-17 at 3:31-24; 122-19 at 3:33-4624]. The Patents also disclose footings and attachment
plates as capable of accomplishing the attachment structure function. [122-17 at 2:57-61 and
4:57-61; 122-19 at 3:11-1525]. Moreover, cable assemblies are disclosed in the 447 Patent.
[rec. doc. 122-19 at 7:1-1026]. Finally, in several places in both Patents, clamps are disclosed as
a means to attach the apparatus. [rec. doc.122-17 at 2:19-22, 2:26-28, 2:37-39; 122-19 at 2:3133, 2:37-39, 2:48-51].
For the above reasons, the Court agrees with Scarborough that the structures disclosed in
the Patent specifications as able to perform the claimed attachment function include pinned

24

The 447 Patent adds "interchanged as well as" before "be substituted by a variety . . . ." the
remainder of the passage is identical.
25

"It should be appreciated that the footings 9 and the attachment plates 17 are an illustrative
method of attaching the apparatus to the pad eye or lifting lug."
26

"[T]he first end of arms 108 is attached to the pad eye 19 by the use of a tension cable 292,
which can be but is not limited to a steel or other high tensile strength cable. Tension cable 292 can be
attached to the arm 108 via a pin 339 through an O-loop arrangement of cable, or any other means
conventional in the art. It should be noted that the cable 292 can be a plurality of cables. Tension cable
292 can be attached to a pad eye 19 via a pin 239 through an O-loop arrangement of cable, or any other
means conventional in the art."

29

connections, threaded fasteners, taper pins, welding, cable assemblies, footings and attachment
plates and clamps as well as any equivalents thereto. While Integricert argues that its proposed
construction is the "simplest . . . [and] not overly-complicated" definition of the phrase, that
argument is not supported by law and, in fact, is contrary to the requirements of § 112(f).
Finally, while Integricert argued at the claim construction hearing that equivalents are a
question of fact for the jury, not a matter of claim construction, that argument misses the point.
The inquiry at this stage of the proceedings is not to identify equivalents, but, rather, to identify
those structures disclosed in the Patent specifications which can accomplish the claimed
function. This the Court has done.
Control Means
Scarborough argues that means-plus-function construction applies and proposes the
following construction for "Control Means": “means-plus-function term encompassing a hand
pump, directional valves, or a flow control manifold and any equivalents thereto.”
Integricert argues that means-plus-function construction should not apply and proposes
the following construction for "Control Means": “any means of effecting flow control for fluid
to and from a hydraulic cylinder.”
For the following reasons, the Court finds that the disputed claim term is in means-plusfunction form, reciting a function in claim 9 of the 322 Patent which is without sufficient
structure to perform the claimed function and therefore adopts Scarborough’s construction in
its entirety as that construction properly identifies the structures disclosed in the specification
which perform the claimed function.

30

The disputed phrase contains the term "means" in association with a function without
disclosing a structure for performing the claimed function.27 Accordingly, the rebuttable
presumption that the phrase be construed as a means-plus-function term under § 112(f) arises.
Integricert has not rebutted the presumption that § 112(f) applies. To the contrary,
Integricert agrees with Scarborough that the phrase "is a 'means-plus-function' element . . . ."
[rec. doc. 66, pg. 28]. However, without explanation, Integricert asserts that "[w]hile
[Scarborough] enumerates some potential structures for accomplishing the given function,
[Integricert's] proposed construction is simpler and more comprehensive." [Id.]. At oral
argument, although unclear, Integricert appeared to argue that the structures identified by
Scarborough are not equivalents and, therefore, Scarborough's construction is incorrect. The
Court disagrees.
As noted above, and as conceded by Scarborough during the claim construction hearing,
equivalents to the structures disclosed in the specification is a question of fact which will be
determined by the jury later in the proceeding. The Court's task at this time is merely to identify
those structures disclosed in the Patent specifications which can accomplish the claimed
function. Furthermore, the argument by Integrecert that its proposal is the "simplest . . . [and]
not overly-complicated" definition of the phrase, is not supported by law and, in fact, is
contrary to the requirements of § 112(f). Section 112(f) mandates that means-plus-function
terms be limited to structures disclosed in the specification and their equivalents, not "any

27

Claim 9 of the 322 Patent provides in pertinent part: "[t]he apparatus in claim 1, further
including: a control means for allowing pressurized fluid to be alternately supplied to and exhausted from
said cylinder . . . ." [rec. doc. 122-17 at 10: 33-36].

31

means" as proposed by Integricert. See WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339,
1348 (Fed. Cir. 1999) citing Valmont Indust., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042
(Fed. Cir. 1993).
The function of "control means" identified in claim 9 is to allow "pressurized fluid to be
alternately supplied to and exhausted from said cylinder . . . ." [rec. doc. 122-17 at 10: 34-36].
The structures disclosed in the specification that can control the pressurized fluid that
flows into and out of the cylinder include actuation by a hand pump, use of a flow control
manifold and directional valves [Id. at 6:36 through 7:3 and Fig. 6]. The Court agrees therefore
with Scarborough that "control means" must be construed to include these structures as well as
any of their equivalents.
Control Manifold
Scarborough proposes that "Control Manifold" requires no construction because the
term is understandable to a person of ordinary skill in the art, as well as a lay person.
Alternatively, Scarborough proposes the following construction for "Control Manifold": “a
device containing an actuator that regulates fluid control.”
Integricert proposes the following construction for "Control Manifold": “any means of
effecting flow control of fluid to and from a hydraulic cylinder.”
The Court agrees with Scarborough that the disputed claim term requires no
construction. A control manifold is understandable in the context of the 322 Patent's
specification to a person of ordinary skill in the art as well as a lay person. The term obviously

32

refers to the structure or device which effects flow control of fluid to and from a cylinder.28
The term appears only in Claims 18 and 19 of the 322 Patent. Claim 18 clearly recites that
"pressurized fluid into said cylinder is controlled by a flow control manifold . . ." and Claim 19
likewise recites that "fluid pressure, in said cylinder, is determined at the control manifold and
monitored by a pressure gauge." The specification recites that the "flow control manifold 50 is
preferably connected to the upper 7 and lower 7A cylinder fittings . . . [and] controls the
direction of flow either into the lower cylinder fitting 7A . . . or into the upper cylinder fitting 7
. . . . [and] also measures the pressure of the fluid." [rec. doc. 122-17 at 7:3-10]. Moreover,
Figure 6 provides an exemplary illustration of a control manifold. There is, therefore, no need
for this Court to construe the term.
Trial courts need not repeat and restate every claim term, and "are not (and should not
be) required to construe every limitation present in a patent's asserted claims." U.S. Surgical
Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997); O2 Micro International Ltd. v.
Beyond Innovation Tech, Co., Ltd., 521 F.3d 1351, 1362 (Fed. Cir. 2008). If this were the case,
trial courts would be "inundated with requests to parse the meaning of every word in the
asserted claims." Shell Global Solutions (US), Inc. v. RMS Engineering, Inc., 782 F.Supp.2d
317, 334 (S.D. Tex. 2011) citing O2, 521 F.3d at 1360. Simply stated, claim construction is not

28

Indeed, it appears that the parties virtually agreed to that construction during the Markman
hearing. [rec. doc. 82 at pg. 59-62]. Integricert did not agree to the term "actuator" proposed by
Scarborough, instead preferring to describe the device as "effecting fluid control." Scarborough on the
other hand objected to Integricert's use of the terms "any means" and "hydraulic" as those terms imply
"means-plus-function" claiming and improper limitation by example, respectively. See e.g. Comark
Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186-1187 (Fed. Cir. 1998); Martek Biosciences
Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1381 (Fed. Cir. 2009); Primos, Inc. v. Hunter's Specialties, Inc.,
451 F.3d 848 (Fed. Cir. 2006); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004).

33

an obligatory exercise in redundancy." U.S. Surgical, 103 F.3d at 1568.
Testing the Integrity of the Welding (or Weld)29
Scarborough proposes that "Testing the Integrity of the Welding (or Weld)" requires no
construction because the term is understandable to a person of ordinary skill in the art, as well
as a lay person. Alternatively, Scarborough proposes the following construction for "Testing
the Integrity of the Welding (or Weld)": “challenging the soundness of the welding or weld.”
Integricert proposes the following construction for "Testing the Integrity of the Welding
(or Weld)": “determining the load capacity of a weld to a pre-determined load.”
The Court does not believe this phrase requires construction. However, to the extent that
construction is required, the Court would adopt Scarborough’s construction in its entirety,
“challenging the soundness of the welding or weld."
Integricert essentially argues that the limitation set forth in Claim 16 of the 322 Patent,
a dependent claim, be incorporated into the other claims of the Patent where this language
appears, including independent claims 1 and 13, as well as, apparently, all claims of the 447
Patent containing this language. This construction violates black letter patent law, and in
particular, the doctrine of claim differentiation. The doctrine of claim differentiation creates a
presumption that a limitation appearing in one claim not be incorporated into other claims; that
presumption is strongest in cases such as that presented to this Court, where the limitation

29

During re-examination, the term "attachment" was inserted before the term "weld" in several
claims of both the 322 and 447 Patents. However, for the reasons set forth in this Court's ruling on the
cross-motions for partial summary judgment on doctrine of absolute intervening rights, the Court does
not find that this amendment affects the Court's construction of the disputed term.

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appears in a dependent claim and is sought to be read into an independent claim.30 See
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) ("The presence of a
dependent claim that adds a particular limitation raises a presumption that the limitation in
question is not found in the independent claim.") citing Wenger Mfg., Inc. v. Coating Mach.
Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir.2001) and Comark Communications, Inc. v. Harris
Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998).
The presumption can be overcome if the circumstances suggest a different explanation,
or if the evidence favoring a different claim construction is strong. Id. The presumption is
unrebutted, however, in this case. Integricert has not shown any reason sufficient to rebut the
presumption that the limitation appearing in claim 16 not be read into claims 1 or 13 of the 322
Patent to preserve the distinction between these claims, nor any sufficient reason to incorporate
the limitation contained in Claim 16 of the 322 Patent to any claim of the 447 Patent containing
the disputed phrase.
Furthermore, to construe the term as proposed by Integricert would effectively
improperly import an added limitation to the all claims containing the phrase as requiring a
quantitative determination of weld capacity to a predetermined load. See Comark
Communications, 156 F.3d at 1186 (dictating against importation of limitations from the
specification into the claims).

30

Claim 13 recites a method for testing weld strength and integrity without reference to any
calculation of "cylinder test pressure" by "determining a required test load based on the weight to be
supported . . . ." Claim 16, which depends from claim 13, adds this limitation. A comparison of claims
13 and 16 makes clear that this is the only significant distinction between the two claims, that is, claim 16
requires load calculation, whereas claim 13 does not.

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At the Markman hearing Integricert additionally argued, on the basis of its proposed
construction of the term "nondestructive", that Scarborough disclaimed a method or apparatus
of challenging the soundness of a weld until it breaks, therefore requiring a load capacity
limitation be read into the claims. For the reasons assigned by the Court with respect to the
proper construction of that term, Integricert's argument cannot be accepted. As set forth in
detail above, Scarborough did not disclaim a method or apparatus which could potentially
damage or destroy an improperly welded test piece, he merely distinguished his invention from
prior art on grounds that his invention did not inherently damage or destroy (by removal or
disassembly and placement in the testing device), thereby allowing a properly welded test piece
to remain intact and usable following testing.
About Said at Least One Test Piece31
Scarborough proposes that "about said at least one test piece" requires no construction.
Alternatively, during the Markman hearing Scarborough proposed the following construction
for "about": “near.”
Integricert proposes the following construction for "about said at least one test piece":
“in a manner that surrounds or encloses said at least one [desired]32 test piece.”
The Court adopts the following definition for "about said at least one test piece":
"around or in a proximate location to, but not necessarily completely surrounding or enclosing."

31

During re-examination, the word "desired" which appeared before the term "test piece" was

deleted. This amendment has no effect on the Court's construction of the phrase.
32

See fn. 31, supra.

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The crux of the dispute centers on the proper construction of the term "about".
Scarborough argues the term means "near" and Integricert argues, without limitation, that the
term means "surrounding or enclosing." The Court cannot accept either of these proposed
constructions and, instead, construes the term as an amalgamation of both constructions.
The term "about" is not defined in the specification of either patent, and appears solely
in claim 27 of the 447 Patent.33 Both parties rely on the depictions of embodiments shown in
the figures of the 447 Patent, as well as various dictionary definitions. The Court has done the
same.
Viewing these figures, it is clear that construing the term as meaning only "near" would
not accurately define that which is depicted in the drawings, which show the framework as
being essentially equidistant from the test piece (referred to as element 19, a pad eye). On the
other hand, while the drawings depict the framework of the apparatus in proximity to the test
piece, the framework, particularly as shown in figure 1A, does not necessarily completely
surround or enclose the test piece as those terms connote. It would therefore be inappropriate
to construe the term as such, thereby excluding a preferred embodiment. See Vitrionics Corp.,
90 F.3d at 1584.
The term "about" is defined by Webster's Online Dictionary as including "around" and
"in the immediate neighborhood of; in contiguity or proximity to." In the context of this Patent,
the Court finds that these definitions of the term are most appropriate.34

33

While the term also appeared in claim 29 of the 447 Patent, that claim was cancelled during
reexamination.
34

http://www.websters-online-dictionary.org/

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Additional Terms Post-Reexamination
In its Supplemental Claim Construction Brief, Integricert argues that this Court should
construe numerous additional terms as they existed before and after reexamination. The
majority of Integricert's argument consists of Integricert's reassertion that the scope of the
claims of the Patents in suit were substantively changed during reexamination and were not
originally limited to "attachment welds."
Given this Court's Ruling on the Cross-Motions for Partial Summary Judgment on
whether Integricert is entitled to application of the doctrine of absolute intervening rights, the
Court declines to construe any additional terms. The majority of the terms cited by Integricert
were considered and discussed in the Ruling, thereby mooting the need for construction. To
the extent that a construction of any such term was necessary, the Court would adopt a
construction consistent with its Ruling. For example, although the parties had apparently
agreed to a construction of the term "attachment weld" prior to reexamination, to the extent
construction of that term is necessary, the Court would adopt "a weld which attaches lifting
points referred to as pad eyes or lifting lugs to other structures which are to be lifted." The
parties, however, are free to agree on an alternate definition consistent with this Court's Ruling.
Conclusion
For the foregoing reasons, the Court construes the disputed terms as set out above.
Signed this 31st day of August, 2015, at Lafayette, Louisiana.

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