Roll-Rite, LLC v. Shur-Co, LLC
Filing
29
Claim Construction OPINION and ORDER. Signed by District Judge Thomas L. Ludington. (SGam)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
NORTHERN DIVISION
ROLL-RITE, LLC,
Plaintiff,
Case Number 12-11150
Honorable Thomas L. Ludington
v.
SHUR-CO, LLC,
Defendant.
________________________________________ /
CLAIM CONSTRUCTION OPINION AND ORDER
Patent infringement analysis is a two-step process. At step one, claim construction, a
court defines disputed patent terms to establish the scope of the patent as a matter of law. At step
two, a factfinder evaluates the constructed claims and accused device and decides whether
infringement is occurring. This opinion addresses step one.
I
A
Plaintiff developed an electric tarp system for use on open-top vehicles, such as dump
trucks. The tarp is stored on a spool attached to a motor. When the motor is turned on, it drives
a shaft that rotates the spool and winds or unwinds the tarp. When the motor is turned off, a
brake engages and locks the tarp in place.
Plaintiff applied for a patent on its device in 1997. The Patent and Trademark Office
initially rejected the application, explaining: “Compton discloses the invention substantially as
claimed, except that Compton does not disclose a brake for the motor. Heider et al. discloses
that it was known in the art to provide a brake for an electric motor.” Plaintiff then requested
that the PTO reconsider its decision, explaining:
Heider et al. does not teach the claimed “brake” operatively connected to the
electric motor “for automatically braking the motor when the electric motor is
turned off.” The Examiner refers to Figures 16 and 17 of Heider et al. for
teaching the brake. However, no brake is shown. Rather, planetary gear
assemblies 118, 130 are shown without any braking structure whatsoever. The
Examiner is reminded that prior art is anticipatory only if every element of the
claimed invention is disclosed in a single item of prior art in the form literally
defined in the claim. Accordingly, the rejection is improper because the claimed
brake is not shown.
The PTO agreed. On November 3, 1998, it issued Plaintiff U.S. Patent No. 5,829,819 (filed Oct.
23, 1997). Entitled “Electric Tarp System for Truck Bed,” the ‘819 patent contains three
independent claims (claims 1, 9, and 17) and 17 dependent claims.
Plaintiff alleges that Defendant is infringing on two of the independent claims — claims
1 and 17 — which provide:
1.
A direct-drive actuator assembly for actuating a tarp spool for a truck bed
tarp system, the direct-drive actuator assembly comprising:
a transmission housing having an output shaft for directly driving the
tarp spool, and further having transmission gears therein engaging the
output shaft;
an electric motor operatively connected to the transmissions gears for
actuating the tarp spool; and
a brake operatively connected to the electric motor for automatically
braking the motor when the electric motor is turned off.
17.
A direct-drive actuator assembly for actuating a tarp spool for a truck bed
tarp system, the direct-drive actuator assembly comprising:
a transmission housing having an output shaft for directly driving a tarp
spool, and a plurality of transmission gears;
an electric motor operatively connected in a stacked relationship with
the electric motor for automatically braking the motor when the
electric motor is turned off;
a cover secured to the transmission housing for enclosing the electric
motor and brake.
-2-
‘819 patent, col. 4, ll. 50–61, col. 6, ll. 18–30. (Plaintiff also alleges that Defendant is infringing
on dependent claims 2, 3, 8, and 18.) Based on this alleged infringement, in March 2012
Plaintiff filed this suit against Defendant.
B
In June, the parties submitted a joint claim construction statement. In it, they agree on
the meaning of six terms. (As noted, they disagree on eight others.) The six agreed definitions
are that:
(1)
“[a] direct-drive actuator assembly” means “[a]n assembly that drives a
tarp spool without chains or belts”;
(2)
an “output shaft for directly driving the tarp spool” means “[t]he
transmission housing output shaft is connected to and rotates the tarp
spool”;
(3)
“an electric motor operatively connected to the transmission gears for
actuating the tarp spool” means “[a]n electric motor that transmits
movement of the motor shaft through gears to the tarp spool to wind and
unwind the tarp”;
(4)
“[a brake for] automatically braking the motor when the motor is turned
off” means “[t]he brake is off when power is supplied to the motor, and
the brake is on when power is not supplied to the motor”;
(5)
“a cover secured to the transmission housing by the plurality of bolts over
the electric motor and brake” means “[t]he cover over the brake and motor
is attached to the transmission housing by the same two or more bolts that
attach the brake to the motor”; and
(6)
“[a brake] in a stacked relationship with the electric motor” means “[t]he
brake and motor are adjacent to each other and the brake is aligned with
the motor so that one end of the brake faces an end of the motor.”
The eight disputed terms are:
(1)
“A direct-drive actuator assembly for actuating a tarp spool for a truck bed
tarp system”;
(2)
“tarp spool”;
-3-
(3)
“truck bed tarp system”;
(4)
“a brake”;
(5)
“a brake operatively connected to the electric motor”;
(6)
“the electric motor and the brake are disposed along a common axis”;
(7)
“transmission housing”;
(8)
“a cover . . . for enclosing the electric brake and motor.”
Each of these disputed terms is addressed in turn. First, however, general principles of patent
law and claim construction are reviewed.
II
A
1
Section 112 of the Patent Act, 35 U.S.C. § 112, requires a patent to have two distinct
components: a specification and claim. See Markman v. Westview Instruments, Inc., 517 U.S.
370, 373 (1996) (discussing 35 U.S.C. § 112). The first paragraph of § 112 provides that the
specification
shall contain a written description of the invention, and of the manner and process
of making and using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same.
§ 112(a). The second paragraph of § 112 provides that, following the specification, the patent
shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the inventor or a joint inventor regards as the
invention.
§ 112(b). While both elements are statutorily required, it is the claims, not the specification,
which “are the sole measure of the grant.” Aro Mfg., Co. v. Convertible Top Replacement Co.,
365 U.S. 336, 339 (1961); see also Smith v. Snow, 294 U.S. 1, 11 (1935); Innova/Pure Water,
-4-
Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004) (“It is a bedrock
principle of patent law that the claims of a patent define the invention to which the patentee is
entitled the right to exclude.”).
2
A claim has three parts: a preamble, transition, and body. MagSil Corp. v. Hitachi
Global Storage Techs., Inc., 687 F.3d 1377, 1383 (Fed. Cir. 2012) (citing Gillette Co. v.
Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005)).
The preamble discloses the sort of invention being claimed. See generally John L.
Cooper, Claim Construction — The Markman Hearing, in Anatomy of a Patent Case 71 (Federal
Judicial Center 2009). In claims 1 and 17 of the ‘819 patent, the preamble discloses “[a] directdrive actuator assembly for actuating a tarp spool for a truck bed tarp system.” ‘819 patent, col.
4, ll. 50–51, col. 6, ll. 18–19.
The transition is the word or phrase that connects the preamble to the body of the claim.
See Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348
(Fed. Cir. 2001). In claims 1 and 17 of the ‘819 patent, the transition is “comprising.” ‘819
patent, col. 4, ll. 52, col. 6, ll. 20.
And the body “sets forth a series of phrases delineating the structural limitations,
elements, or steps in the invention.
Thus, the claim construction typically focuses on the
limitations in the body of the claim.” Cooper, supra, at 72.
B
The Supreme Court instructs that “the construction of a patent, including terms of art
within its claim, is exclusively within the province of the court.” Markman, 517 U.S. at 372.
The twin purposes of the exercise are “to define the proper scope of the invention and to give
-5-
meaning to claim language.” Peter Menell et al., Patent Case Management Judicial Guide §
5.1.4.3 (Federal Judicial Center 2009).
By establishing these definitions, a court offers a
foundation for summary judgment motions or jury instructions or both. See, e.g., IPPV Enters.,
LLC v. Echostar Commc’ns Corp., 106 F. Supp. 2d 595, 601 (D. Del. 2000).
1
Because the construction of a patent is exclusively within the province of a court, the
court can adopt a definition put forward by one of the parties or devise its own construction.
Menell, supra, § 5.1.4.4.
The standard is objective, with a twist: “A court construing a patent claim seeks to accord
a claim the meaning it would have to a person of ordinary skill in the art at the time of the
invention.” Innova/Pure Water, 381 F.3d at 1116 (collecting cases).
“In some cases,” the Federal Circuit observes, “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 v. AWH Corp., 415 F.3d 1303, 1314 (Fed.
Cir. 2005) (en banc) (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)).
Indeed, in some cases the ordinary meaning of contested language will be so apparent as
to not require construction. For example, if a term “is non-technical, is in plain English and
derives no special meaning from the patent and its prosecution history, then the court has no
need to function as a thesaurus.” Menell, supra, § 5.1.4.3; see also U.S. Surgical Corp. v.
Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of
resolution of disputed meanings and technical scope, to clarify and when necessary to explain
-6-
what the patentee covered by the claims, for use in the determination of infringement. It is not
an obligatory exercise in redundancy.”).
If, however, the term at issue has a disputed technical meaning or scope — one which a
jury should not be expected to readily appreciate — the court must define the term. Menell,
supra, § 5.1.4.3.
2
In defining such a term, “the court looks to those sources available to the public that
show what a person of skill in the art would have understood disputed claim language to mean.
Those sources include the words of the claims themselves, the remainder of the specification, the
prosecution history, and extrinsic evidence.” Phillips, 415 F.3d at 1314 (citations and quotation
marks omitted) (quoting Innova, 381 F.3d at 1116). And, moreover, the court should do so in
that order. Phillips, 415 F.3d at 1314.
a
From the outset, “a claim construction analysis must begin and remain centered on the
claim language itself, for that is the language the patentee has chosen to particularly point out
and distinctly claim the subject matter which the patentee regards as his invention.” Innova/Pure
Water, 381 F.3d at 1116 (quotation marks and brackets omitted) (quoting Interactive Gift
Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001)).
b
“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.” Phillips, 415 F.3d at 1315
-7-
(quotation marks and citations omitted) (quoting Markman v. Westview Instruments, Inc., 52
F.3d 967, 978 (Fed.Cir.1995) (en banc), aff’d, 517 U.S. 370 (1996)).
And the Patent Act itself, as noted, requires the specification describe the claimed
invention in “clear, concise, and exact terms.” 35 U.S.C. § 112(a). Thus, as the Supreme Court
explained more than a century ago, “in case of doubt or ambiguity it is proper in all cases to refer
back to the descriptive portions of the specification to aid in solving the doubt or in ascertaining
the true intent and meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31,
38 (1878).
c
Next, a court “should also consider the patent’s prosecution history, if it is in evidence.”
Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980). The Federal Circuit explains that
“like the specification, the prosecution history was created by the patentee in attempting to
explain and obtain the patent.
Yet 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.” Phillips, 415 F.3d at 1317.
d
Finally, a court may consider “extrinsic evidence, which consists of all evidence external
to the patent and prosecution history, including expert and inventor testimony, dictionaries, and
learned treatises.” Id. (quotation marks omitted) (quoting Markman, 52 F.3d at 980). This
evidence is less reliable than intrinsic evidence, however, and “cannot be used to vary the
meaning of the claims as understood based on a reading of the intrinsic record.” Phillips, 415
F.3d at 1319.
-8-
Within the types of extrinsic evidence, the Federal Circuit has “especially noted the help
that technical dictionaries may provide to 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 (quotation
marks omitted) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.4 (Fed. Cir.
1996)).
In contrast, “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.” Phillips, 415 F.3d at 1318 (citing Senmed, Inc. v. Richard–Allan Med.
Indus., Inc., 888 F.2d 815, 819 n.8 (Fed. Cir. 1989)).
With these general principles in mind, the particular terms at issue here are addressed.
C
1
The first disputed term is the final phrase of the preamble to claims 1 and 17: “A directdrive actuator assembly for actuating a tarp spool for a truck bed tarp system.” ‘819 patent, col.
4, ll. 50–51, col. 6, ll. 18–19 (emphasis supplied).
Defendant asserts that the phrase “for a truck bed tarp system” is a limitation on the scope
of the patent. Plaintiff asserts that it is not.
a
Whether a preamble phrase limits the scope of the patent is governed by a frustratingly,
“famously vague standard.” Menell, supra, § 5.2.3.2.5; see also Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“No litmus test defines when a
preamble limits claim scope.”).
-9-
Under this standard, a preamble phrase is limiting when it is “necessary to give life,
meaning, and vitality to the claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999) (quotation marks omitted) (collecting cases). For example, if a “preamble
is grammatically essential to the claim, the general rule is that it is limiting.” Menell, supra, §
5.2.3.2.5 (collecting cases). Likewise, “clear reliance on the preamble during prosecution to
distinguish the claimed invention from the prior art transforms the preamble into a claim
limitation because such reliance indicates use of the preamble to define, in part, the claimed
invention.” Catalina Mktg., 289 F.3d at 808.
In contrast, when “the body of the claim fully and intrinsically sets forth the complete
invention, including all of its limitations, and the preamble offers no distinct definition of any of
the claimed invention’s limitations, but rather merely states, for example, the purpose or intended
use of the invention, then the preamble is of no significance to claim construction because it
cannot be said to constitute or explain a claim limitation.” Id. (collecting cases). For instance,
“preamble language merely extolling benefits or features of the claimed invention does not limit
the claim scope without clear reliance on those benefits or features as patentably significant.” Id.
at 809 (citing Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375 (Fed. Cir.
2001)). Likewise, “a preamble generally is not limiting when the claim body describes a
structurally complete invention such that deletion of the preamble phrase does not affect the
structure or steps of the claimed invention.” Catalina Mktg., 289 F.3d at 809 (citing IMS Tech.,
Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000)).
Here, the phrase “for a truck bed tarp system” illustrates the intended use. The directdrive actuator assembly is to be used “for a truck bed tarp system.” That’s its intended purpose.
- 10 -
But the phrase does not affect the structure of the device. Claim 1, for example, has six
distinct parts: an electric motor, transmission gears, output shaft, transmission housing, tarp
spool, and brake. See ‘819 patent, col. 4, ll. 50–61. In full, the claim provides:
A direct-drive actuator assembly for actuating a tarp spool for a truck bed tarp
system, the direct-drive actuator assembly comprising:
a transmission housing having an output shaft for directly driving the tarp spool,
and further having transmission gears therein engaging the output shaft;
an electric motor operatively connected to the transmissions gears for actuating
the tarp spool; and
a brake operatively connected to the electric motor for automatically braking the
motor when the electric motor is turned off.
Id. Deleting the preamble phrase “for a truck bed tarp system” does not alter the structure of this
device or the manner that it operates.
Rather, the body of the claim describes a structurally complete device. The electric
motor rotates the transmission gears. The gears drive the output shaft. The shaft rotates the tarp
spool. When the motor is turned off, a brake automatically engages and stops the motor.
Deleting the preamble phrase “for a truck bed tarp system” does not alter the structure of this
claim.
Likewise, claim 17 has seven distinct parts: an electric motor, transmission gears, output
shaft, transmission housing, tarp spool, brake, and cover. See ‘819 patent, col. 6, ll. 18–30
(quoted above). They are structured in much the same way as claim 1.1
Once again, deleting the preamble phrase “for a truck bed tarp system” does not alter the
structure of this claim. Rather, again the motor rotates the transmission gears. The gears drive
the output shaft. The shaft rotates the tarp spool. When the motor is turned off, a brake
1
There are, of course, some differences. For one, the brake is aligned in a “stacked relationship” with the
motor. For another, the cover encloses the motor and brake.
- 11 -
automatically engages and stops the motor. The transmission gears and output shaft are located
within the transmission housing. And the cover is secured to the transmission housing, enclosing
the motor and brake. Omitting the phrase “for a truck bed tarp system” does not affect this
structure or the steps in which the claimed invention operates.
Plaintiff, moreover, did not rely on the preamble during prosecution — the subject did
not come up in the back and forth that Plaintiff had with the PTO. The phrase “for a truck bed
tarp system” was not patentably significant. Claims 1 and 17 are not limited by that preamble
phrase.
Reinforcing this conclusion are claims 6 and 9 of the ‘819 patent. See ‘819 patent, col. 5,
ll. 10–12, col. 5, ll. 20–33. Claim 6 is a dependent claim, providing: “The direct-drive actuator
assembly of claim 1, further comprising first and second attachment bolts for securing the
transmission housing to the tarp housing.” Id. col. 5, ll. 10–12.
This adds a limitation to claim 1. Specifically, claim 6 adds an additional component,
“attachment bolts,” that secure the transmission housing to the tarp’s housing.
Under the doctrine of claim differentiation, the presumption is that the independent claim
(claim 1) is not restricted by the added limitation in the dependent claim (claim 6). See, e.g.,
Phillips, 415 F.3d at 1315 ( “[T]he 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.”); see also Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007) (“That
presumption is especially strong when the limitation in dispute is the only meaningful difference
between an independent and dependent claim, and one party is urging that the limitation in the
dependent claim should be read into the independent claim”).
- 12 -
Thus, claim 1 is not restricted to the transmission housing being bolted to the tarp
housing — much less bolted to the tarp housing which, in turn, is affixed to a truck.
Claim 9, though an independent claim, is likewise instructive. See, e.g., Seachange Int’l,
Inc. v. C-COR, Inc., 413 F.3d 1361, 1368–69 (Fed. Cir. 2005) (“Although the doctrine [of claim
differentiation] is at its strongest where the limitation sought to be ‘read into’ an independent
claim already appears in a dependent claim, there is still a presumption that two independent
claims have different scope when different words or phrases are used in those claims.”
(quotation marks and citation omitted) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 910 (Fed. Cir. 2004)). Claim 9 provides:
An electric tarp system for covering a truck bed, the system comprising:
a tarp housing adapted for attachment to the truck;
a tarp spool positioned within the tarp housing, and having an output shaft for
directly driving the tarp spool, and further having transmission gears therein
engaging the output shaft;
an electric motor operatively connected to the transmission gears for actuating
the tarp spool; and
a brake operatively connected to the electric motor for automatically braking the
motor when the electric motor is turned off.
‘819 patent, col. 5, ll. 20–33. The body of claim 9 thus expressly limits the claim to “a tarp
housing adapted for attachment to [a] truck.”
The body of claims 1 and 17, as noted, contain no such limitation. They are not limited
by the preamble phrase “for a truck bed tarp system.”
b
Against this conclusion, Defendant makes three principal arguments. While each raise
fair points, they do not alter the above conclusion.
- 13 -
i
First, Defendant argues that “the clear import of the patent itself” is that it is designed for
use in truck bed tarp systems. The title of the patent is “Electric Tarp System for Truck Bed.”
The first drawing (figure 1) depicts a truck with a tarp system. See ‘819 patent fig. 1. And the
specification begins by explaining “The present invention relates to an electric tarp system for a
truck bed.” Id. col. 1, ll. 4–5.
Defendant is correct that references to “a truck bed tarp system” abound in the
specification. Moreover, as one leading treatise notes: “A review of the Federal Circuit’s cases
over the past ten years, in cases that litigated the issue of whether to construe the preamble,
reveals that the dominant approach in the close cases is to construe the preamble as a limitation.”
Menell, supra, § 5.2.3.2.5. This, however, is not such a case.
As a threshold matter, the primary purpose of the device is indisputably for use with a
truck bed tarp system. The title, specification, and at least one of the figures make that plain.
But the phrase appears nowhere in the body of claims 1 or 17. See ‘819 patent, col. 4, ll.
50–61, col. 6, ll. 18–30 (quoted above). The Supreme Court has long cautioned that “the claims
of the patent, not its specifications, measure the invention.” Snow, 294 U.S. at 11; see also Aro
Mfg.., 365 U.S. at 339 (“[T]he claims made in the patent are the sole measure of the grant.”).
The Federal Circuit likewise cautions that “although the specifications may well indicate that
certain embodiments are preferred, particular embodiments appearing in a specification will not
be read into the claims when the claim language is broader than such embodiments.” Electro
Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed.Cir.1994). The court
elaborates:
We have had many occasions to cite one or both of the twin axioms regarding the
role of the specification in claim construction: On the one hand, claims must be
- 14 -
read in view of the specification, of which they are a part. On the other hand, it is
improper to read a limitation from the specification into the claims. Although
parties frequently cite one or the other of these axioms to us as if the axiom were
sufficient, standing alone, to resolve the claim construction issues we are called
upon to decide, the axioms themselves seldom provide an answer, but instead
merely frame the question to be resolved. We have recognized that there is
sometimes a fine line between reading a claim in light of the specification, and
reading a limitation into the claim from the specification. As we have explained,
an inherent tension exists as to whether a statement is a clear lexicographic
definition or a description of a preferred embodiment. The problem is to interpret
claims in view of the specification without unnecessarily importing limitations
from the specification into the claims.
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904–05 (Fed. Cir. 2004) (citations and
quotation marks omitted). Likewise, the court observes that “if we do not read limitations into
the claims from the specification that are not found in the claims themselves, then we certainly
will not read limitations into the claims from the patent title.” Pitney Bowes, 182 F.3d at 1312
(citing E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7
USPQ2d 1129, 1132 (Fed. Cir. 1988)).
Here, as detailed above, the body of claims 1 and 17 describe a structurally complete
device. While the preferred embodiment is indisputably for use in a truck bed tarp system, that
limitation does not define claims 1 and 17. Unnecessary to the substance of the claims, that
limitation will not be imported from the specification into the claims themselves.
ii
Next, Defendant argues the preamble to claims 1 and 17 is a limitation because it is
grammatically essential to those claims. Defendant writes that the bodies “incorporate the
preamble language into the body of the claim because of the use of the term ‘tarp spool.’ . . . In
both instances where ‘tarp spool’ appears in the body of the claim it uses the term ‘the’
indicating that the antecedent basis appears earlier.” Thus, Defendant concludes, the entire
- 15 -
phrase “for a tarp spool for a truck bed tarp system” is grammatically incorporated into the body
of the claim.
Defendant is correct that the initial use of the indefinite article “a” in the preamble’s
phrase “a tarp spool” followed by the use of the definite article “the” in the body’s phrase “the
tarp spool” suggests that the latter refers back to the former. Cf. Baldwin Graphic Sys., Inc. v.
Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). But Defendant’s conclusion does not follow.
The entire phrase “a tarp spool for a truck bed tarp system” is not grammatically essential to the
claim.
To elaborate, the phrase “a tarp spool” refers to a physical object. That object is essential
to the claimed invention. And it is expressly incorporated into the body of claims 1 and 17.
The phrase “for a truck bed tarp system,” in contrast, refers to a purpose. That purpose is
not essential to the claims grammatically, patentably, or otherwise.
It is not expressly
incorporated into the bodies of the claims. And grammatically the phrase does not circumscribe
the substance of the “tarp spool.” That object remains that object. The phrase instead merely
describes one use for the tarp spool (the preferred use). As noted above (several times), deleting
the phrase does not affect the device’s structure.
Nor did the phrase come up during the prosecution history. Before the PTO, Plaintiff
disputed whether the brake limitation was disclosed in the prior art — not whether the claimed
invention was limited to use in truck bed tarp system.
The phrase is not a limitation on the scope of the patent.
iii
Finally, Defendant asserts that the prior art referenced in the patent demonstrates that the
claims are limited to tarp spools for “trucks.”
- 16 -
The ‘819 patent cites 19 patents. And some, Defendant is correct, are expressly limited
to trucks.
For example, the Compton patent (which was raised by the PTO during the
prosecution history) contains a claim expressly limited to a device “mounted on the truck body.”
U.S. Patent No. 4,516,802, col. 10, ll. 25–26 (filed Dec. 2, 1982). Similarly, U.S. patent
3,868,142, entitled “cover for trucks,” is expressly limited to “a truck having a frame with an
extensible flexible cover for the truck.” And both of these patents are cited in the ‘819 patent.
But other patents cited in the ‘819 patent have no such limitations. Take, for example,
the Heider patent (also raised by the PTO during the prosecution history). U.S. Patent No.
4,529,098 (filed Sept. 28, 1984). Entitled “top closure for a rectangular box,” the contemplated
purposes of that invention include “covering the tops of truck trailers, for covering the upper
ends of bins, or for covering such things as solar collectors.” ‘098 Patent, col. 1., ll. 13–15. And
nothing in the body of the patent’s seven claims limits the invention to vehicles, much less
trucks. Id. col. 8, l. 6–col. 10., l. 18. Likewise, U.S. patent number 5,697,663, “heap climbing
container system,” is expressly limited to a cover for “an open topped container.” But nothing in
the body of the claims of that invention limits the invention to vehicles, much less trucks.
In sum, the prior art does not demonstrate that the claims of the ‘819 patent are limited to
tarp spools for “trucks.” The preamble phrase “for a truck bed tarp system” is not a limitation on
the scope of the patent.
2
The second disputed term is the phrase “tarp spool” in claims 1 and 17. ‘819 patent, col.
4, l. 55, col. 6, ll. 22. The parties agree that the term is a claim limitation. They disagree about
its meaning.
- 17 -
Plaintiff’s proposed construction is: “A spindle or cylinder which rotates about its axis to
wind and unwind the tarp material.”
Initially, Defendant’s proposed construction was: “a
mounted, stationary pipe or tube that can rotate around its axis to wind and unwind tarp
material.” In its claim construction brief, however, Defendant writes that it agrees to “the use of
the words ‘spindle or cylinder.’”
Accordingly, the remaining dispute on this term is whether to limit the claims by defining
“tarp spool” as both “mounted” and “stationary.”
a
In constructing a claim, as noted, a court “seeks to accord a claim the meaning it would
have to a person of ordinary skill in the art at the time of the invention.” Innova/Pure Water, 381
F.3d at 1116 (collecting cases).
In defining the term’s meaning, “the specification is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
disputed term.”
Phillips, 415 F.3d at 1315 (quotation marks omitted) (quoting Vitronics
Corp., 90 F.3d at 1582).
In defining a term’s scope, in contrast, the specification is not
necessarily the best guide to the limits of the term. As the Federal Circuit puts the point: “The
problem is to interpret claims in view of the specification without unnecessarily importing
limitations from the specification into the claims.” Liebel-Flarsheim Co., 358 F.3d at 905.
Here, claims 1 and 17 do not elaborate on what the “tarp spool” means. Nor do they
indicate that it is either “mounted” or “stationary.”
The specification, however, does elaborate on the tarp spool. Specifically, it describes
the tarp spool as part of “a winding assembly” that “includes a direct-drive actuator assembly for
rotatably driving the flexible cover or tarp, which is supported on the rotatable spool.” ‘819
- 18 -
patent, col. 3, ll. 11–13. Again, nothing in this written description suggests that the tarp spool is
either “mounted” or “stationary.”
Figure 1, of course, does depict a winding assembly affixed to the top of a truck. But as
noted, “although the specifications may well indicate that certain embodiments are preferred,
particular embodiments appearing in a specification will not be read into the claims when the
claim language is broader than such embodiments.” Electro Med. Sys., 34 F.3d at 1054.
And nothing in the claim language limits a tarp spool to this type of embodiment.
Likewise, nothing in the prosecution history suggests that a tarp spool must be either “mounted”
or “stationary.”
Accordingly, the phrase “tarp spool” will be defined as “a spindle or cylinder that rotates
around its axis to wind and unwind tarp material.” Defendant’s proposed limitation that the tarp
spool is “mounted” and “stationary” will be rejected.
b
Defendant advances three arguments in support of its preferred interpetation. Again,
none alter the above conclusion.
i
First, Defendant offers an opinion of its expert, Jerry Ray Dimmer, that “tarp spool” is a
technical term “used to refer to mounted, stationary rotating cylinders or tubes used on front-torear tarp systems.”
Expert testimony in claim construction, as noted, is generally considered the least reliable
type of evidence. Phillips, 415 F.3d at 1318 (discussed above). Moreover, the Federal Circuit
cautions that “conclusory, unsupported assertions by experts as to the definition of a claim term
are not useful to a court.” Id. Likewise, “a court should discount any expert testimony that is
- 19 -
clearly at odds with the claim construction mandated by the claims themselves, the written
description, and the prosecution history, in other words, with the written record of the
patent.” Id. (quotation marks omitted) (quoting Key Pharms. v. Hercon Labs. Corp.,161 F.3d
709, 716 (Fed. Cir. 1998)).
Here, Mr. Dimmer does not support his assertion with citation to technical dictionaries,
industry-specific treatises, or other sources independent of his opinion. Moreover, his assertions
do not find support in the claims themselves, the written description, or the prosecution history.
And, although figure 1 does depict a winding assembly affixed on top of a truck, the claim
language itself is broader than this embodiment.
Defendant’s argument that the term “tarp spool” should be limited based on Mr.
Dimmer’s opinion lacks merit.
ii
Next, Defendant argues that “tarp spool” should be limited to one that is “mounted” and
“stationary” because of the ‘819 patent’s drawings and written specifications. Defendant writes
that “the patent’s written specification calls for the ‘tarp spool’ to be mounted and stationary. It
states, ‘The system includes a tarp housing adapted for attachment to the truck, and a tarp spool
positioned within the tarp housing. A direct-drive actuator assembly, as described above, is
directly attached to the tarp housing for directly driving the tarp spool.’ As the tarp spool is
attached to the tarp housing, and the tarp housing is attached to the truck, the tarp spool is
necessarily mounted and stationary.”
Defendant’s quotation to the ‘819 patent’s specification is accurate — but incomplete.
The sentence that immediately precedes Defendant’s selected text makes plain that the paragraph
is describing claim 9, not claim 1 or 17. See ‘819 patent, col. 2, ll. 9–14.
- 20 -
To elaborate, the preamble to claim 9 is “An electric tarp system for covering a truck
bed.” ‘819 patent, col. 4, l. 20. The first sentence of the specification paragraph that Defendant
relies on is “Another aspect of the invention provides an electric tarp system for covering a truck
bed.” Id. col. 2, ll. 9–10.
The next two sentences of claim 9 are “a tarp housing adapted for attachment to the
truck” and “a tarp spool positioned within the tarp housing.” Id. col. 4, ll. 22–23. The next
sentence of the specification paragraph that Defendant relies on is “The system includes a tarp
housing adapted for attachment to the truck, and a tarp spool positioned within the tarp housing.”
Id. col. 2, ll. 10–12.
And so it goes point for point, making plain that this paragraph of the specification is
describing claim 9, not claims 1 and 17.
Neither of those claims, as noted, reference an
“attachment to [a] truck.” Defendant’s reliance on this portion of the specification is misplaced.
iii
Finally, Defendant argues that the prior art reveals that “tarp spool” is a term of art in the
field meaning a structure found on a front-to-back rather than side-to-side tarp system.
Defendant further asserts that when patent drafters wish to refer to a side-to-side system, they use
other terms of art in the field, like “reel.” In support, Defendant cites another of Plaintiff’s
patents, entitled “trailer cover system,” U.S. Patent No. 7,726,720 (filed July 23, 2007).
Defendant’s reliance on the ‘720 patent is misplaced. As a threshold matter, Defendant is
correct that the ‘720 patent depicts a side-to-side tarp system. Defendant is not correct, however,
that the ‘720 patent uses “reel” as a term of art to mean something distinct from “tarp spool.” On
the contrary, the terms are used interchangeably.
- 21 -
To begin, the specification first explains: “A rotatable reel 32 extends from the motor 30,
and is operatively connected to one end of the cover 12 so as to function as a take-up spool.”
‘720 patent, col. 3, ll. 6–7. Thus, the term “reel” refers to figure number 32.
One paragraph later in the specification, it continues: “A locking channel portion 56 of
the exterior surface 44 is concave, in order to accommodate the stowed tarp spool 32.” Id. col. 3,
ll. 29–31. Thus, the term “tarp spool” also refers to figure number 32. The terms “reel” and
“tarp spool” are used to refer to the same structure. Reel is not a term of art in field that means
something distinct from tarp spool. Rather, the terms may be used interchangeably.
To repeat, the phrase “tarp spool” will be defined as “a spindle or cylinder that rotates
around its axis to wind and unwind tarp material.” Defendant’s proposed limitation that the tarp
spool is “mounted” and “stationary” will be rejected.
3
The third term at issue is ancillary to the first disputed term. That dispute, as noted, is
whether the preamble phrase “for a truck bed tarp system” is a limitation. See ‘819 patent, col. 4,
l. 51, col. 6, l. 19. Plaintiff maintains that it is not. Defendant asserts that it is a limitation that
means “[a] system for holding a covering and extending it from the front to the rear of a truck
having a bed and cab supported on a single, integrated frame.”
For reasons discussed above, the Court concludes that the phrase is not a limitation and
therefore declines to define the term.
4
The fourth disputed term is the phrase “a brake” in claims 1 and 17. See ‘819 patent, col.
4, l. 59, col. 6, ll. 26, 30.
- 22 -
Plaintiff proposes that “a brake” should be defined to mean “[a]n assembly which
prevents movement of an object.” Defendant, arguing in the alternative, puts forward two
definitions. Defendant writes: “This is a means-plus-function term construed according to 35
U.S.C. 112, para. 6, to cover the corresponding structure described in the specification for
accomplishing the function recited in the claim (i.e., ‘automatic braking when the motor is turned
off’). Alternatively, ‘a brake’ is a device for applying contact friction to stop movement having
structural elements described in the ‘819 patent.”
a
Notwithstanding the parties’ arguments, the Court will decline to define the term “brake”
in claims 1 and 17. As noted, claim construction “is not an obligatory exercise in redundancy.”
U.S. Surgical Corp., 103 F.3d at 1568. Thus, when a term “is non-technical, is in plain English
and derives no special meaning from the patent and its prosecution history, then the court has no
need to function as a thesaurus.” Menell, supra, § 5.1.4.3.
In pertinent part, claim 1 provides “a brake operatively connected to the electric motor
for automatically braking the motor when the electric motor is turned off.” ‘819 patent, col. 4, ll.
59–61. Claim 17 provides: “a brake operatively connected in a stacked relationship with the
electric motor for automatically braking the motor when the electric motor is turned off.” ‘819
patent, col. 6, ll. 26–28.
In claims 1 and 17 the term “a brake” refers to just that — a brake. Nothing more,
nothing less. Plaintiff is thus correct that “a brake” in this context is a thing “which prevents
movement of an object.” But the jury does not need to be given this definition to understand
what “a brake” means in claims 1 and 17. It is used in a non-technical, plain English way.
- 23 -
Nor should the jury be told that “a brake” is “a device for applying contact friction to stop
movement.” The text of claims 1 and 17 does not support such a limitation. Rather, in those
claims it is simply “a brake.” No particular type, just “a brake.”
Reinforcing this conclusion are dependent claims 4 and 19. See ‘819 patent, col. 5, ll. 4–
5, col. 6, ll. 34–36. There, the brake is described as a particular sort of brake: “a spring-applied,
power-released type brake.” Id. As noted, “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. Thus, in claims 4 and 19, the brake is a
particular sort of brake (the “spring-applied, power-released type of brake”). In claims 1 and 17,
it’s just “a brake.”
Further reinforcing this conclusion is the prosecution history of the ‘819 patent. When
Plaintiff applied for the patent, the PTO initially rejected the application, explaining: “Compton
discloses the invention substantially as claimed, except that Compton does not disclose a brake
for the motor. Heider et al. discloses that it was known in the art to provide a brake for an
electric motor.” Plaintiff requested reconsideration, writing:
Heider et al. does not teach the claimed ‘brake’ operatively connected to the
electric motor ‘for automatically braking the motor when the electric motor is
turned off.’ The Examiner refers to Figures 16 and 17 of Heider et al. for
teaching the brake. However, no brake is shown. Rather, planetary gear
assemblies 118, 130 are shown without any braking structure whatsoever. The
Examiner is reminded that prior art is anticipatory only if every element of the
claimed invention is disclosed in a single item of prior art in the form literally
defined in the claim. Accordingly, the rejection is improper because the claimed
brake is not shown.
The PTO agreed and approved the claim. Nowhere in this correspondence was a particular type
of brake discussed. Rather, it was simply a brake.
- 24 -
Sometimes a brake is just a brake. And the brake in claims 1 and 17 is one of those
times. The Court will decline to define the term.
b
i
Plaintiff does not appear to have serious reservations about leaving the term to its
ordinary meaning in the art.
ii
Defendant, in contrast, vigorously maintains that the term should be defined by the Court
— and, moreover, defined as a “means-plus-function” claim pursuant to 35 U.S.C. § 112(f).
That paragraph provides:
An element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.
When this paragraph is held applicable to a disputed term, “then the claim term is construed by
identifying the ‘function’ associated with the claim language, and then the corresponding
‘structure’ in the specification with that function. The claim is construed to be limited to those
corresponding structures and their equivalents.” Menell, supra, § 5.2.3.5; see, e.g., Callicrate v.
Wadsworth Mfg., Inc., 427 F.3d 1361, 1369 (Fed. Cir. 2005).
Thus, it isn’t hard to understand why Defendant wants the Court to construe the term “a
brake” as a means-plus-function claim — that would limit its meaning to the types of brakes
discussed in the specification and their equivalents.
But the Federal Circuit cautions: “Means-plus-function claiming applies only to purely
functional limitations that do not provide the structure that performs the recited function.”
- 25 -
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1023 (Fed. Cir. 2006)
(quoting Phillips, 415 F.3d at 1311).
A claim that does not expressly include the word “means” — as in this case — “will
trigger the rebuttable presumption that 35 U.S.C. § 112 ¶ 6 does not apply.” DePuy Spine, 469
F.3d at 1023 (brackets omitted) (quoting CCS Fitness v. Brunswick Corp., 288 F.3d 1359, 1369
(Fed. Cir. 2002)). Moreover, the Federal Circuit cautions that “the presumption flowing from the
absence of the term ‘means’ is a strong one that is not readily overcome.” DePuy Spine, 469
F.3d at 1023 (citing Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed.
Cir. 2004)).
Nevertheless, the presumption “can be rebutted by showing that the claim element recites
a function without reciting sufficient structure for performing that function.” DePuy Spine, 469
F.3d at 1023 (brackets omitted) (citing Watts v. XL Sys. Inc., 232 F.3d 877, 880 (Fed.Cir.2000)).
In Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1256 (Fed. Cir. 1998), for example,
the Federal Circuit concluded that the presumption was overcome because a “lever moving
element” was not a known structure in the lock art. Id. at 1213–15.
In contrast, in DePuy Spine the Federal Circuit concluded that the presumption against
means-plus-function treatment was not overcome for the term “compression member.” 469 F.3d
at 1023. The court first noted: “The claim language demonstrates that the compression member
must fit inside the cylindrical opening and be of sufficient size to exert a force on the screw head,
which implies structure.” Id.
Here, the claim language also suggests structure. In claim 17, for example, the brake is
an object “operatively connected in a stacked relationship with the electric motor” and located
- 26 -
beneath “a cover secured to the transmission housing for enclosing the electric motor and brake.”
‘819 patent, col. 6, ll. 26–30.
Moreover, the claim recites both a separate structure (“brake”) and function
(“automatically braking the motor”). As the Federal Circuit itself notes: “Many devices take
their names from the functions they perform. The examples are innumerable, such as . . .
‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’” Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d
1580, 1583 (Fed. Cir. 1996). This is such a case. Defendant’s proposed limitation will be
rejected.
In claims 1 and 17, “a brake” is simply that. A brake. The Court will decline to define
the term.
5
The fifth disputed term is related to the fourth. At issue is the phrase in claim 1: “a brake
operatively connected to the electric motor.” ‘819 patent, col. 4, l. 59.2
Plaintiff proposes that the phrase means “[a]n assembly linked with the electric motor.”
Defendant initially proposed that the phrase means “[t]he brake is connected to the electric motor
and, when activated, applies frictional force to stop rotational movement of the motor shaft.” In
its brief, however, Defendant writes that it “abandons its earlier proposal” and asks instead that
the phrase be defined to mean “the brake is energized when the motor is energized, and the brake
is de-energized when the motor is de-energized.”
a
At the core of the phrase “a brake operatively connected to the electric motor” are two
words, “operatively connected.” These same two words were at issue in Innova/Pure Water, Inc.
2
This precise phrase comes in claim 1, id., although claim 17 contains a similar provision, which provides:
“a brake operatively connected in a stacked relationship with the electric motor,” id. col. 6, ll. 26–27.
- 27 -
v. Safari Water Filtration Systems, Inc., 381 F.3d 1111 (Fed. Cir. 2004), which involved a
“bottle filter cap” patent. The district court concluded that “the ordinary meaning” of a claim
providing that a tube was “operatively connected” to a cap “requires that the two components be
‘affixed by some tenacious means of physical engagement that results in a unitary structure.’ ”
Id. at 1117–18 (ellipsis and brackets omitted).
The Federal Circuit reversed. The court first noted that “operatively connected” is “a
general descriptive term frequently used in patent drafting to reflect a functional relationship
between claimed components.” Id. at 1118. “In the absence of modifiers,” the Federal Circuit
then cautioned, “general descriptive terms are typically construed as having their full meaning.”
Id. (citing Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 992 (Fed. Cir. 1999)).
The district court erred, the Federal Circuit concluded, by importing examples of ways to
connect the tube to the cap from the specification into the claim to require “physical engagement
between the tube and the cap that results in a unitary structure.” Innova/Pure Water, 381 F.3d at
1118. Instead, the court interpreted the phrase to mean that the tube is “operatively connected”
to the cap “when the tube and cap are arranged in a manner that affects filtering.” Id.
Here, as in Innova/Pure Water, the term “operatively connected” in claims 1 and 17 does
not have any modifiers. Accordingly, as in Innova/Pure Water the term will be interpreted
functionally and the limitations of the specification will not be read into the claim. Rather, the
brake is “operatively connected” to the electric motor when it is “arranged in a manner” that is
capable of braking the motor.
i
Plaintiff’s proposed definition — that “a brake operatively connected to the electric
motor” means “[a]n assembly linked with the electric motor” — is insufficiently descriptive.
- 28 -
The proposed definition does not describe the claimed invention’s function. The object is not
just any type of assembly; it is a brake. And the brake is not simply linked to the motor; it is
arranged in a manner that is capable of braking the motor.
ii
Defendant’s amended proposal — that the phrase be defined to mean “the brake is
energized when the motor is energized, and the brake is de-energized when the motor is deenergized” — offers both too little description and too much.3
The precise phrase at issue, as noted, comes from the body of claim one. In pertinent
part, that claim provides: “a brake operatively connected to the electric motor for automatically
braking the motor when the electric motor is turned off.” ‘819 patent, col. 4, ll. 59–61 (emphasis
supplied). Defendant’s proposal, that “the brake is energized when the motor is energized” (and
vice versa) does not describe the brake’s function (i.e., braking the motor). Moreover, it injects a
preferred embodiment from the specification into the claim that the brake is “energized.” See
‘819 patent, col 2, ll. 4–8 (“Preferably, the electric motor and brake are operatively connected
such that the brake and electric motor may be deenergized simultaneously so that the brake
automatically locks the motor to prevent tarp rotation when the motor is switched off.”). This is
improper, Innova/Pure Water teaches. The term will be given its full meaning.
Reinforcing this conclusion is dependent claim 5, which provides: “The direct-drive
actuator assembly of claim 4, wherein the electric motor and brake are electrically connected for
3
Defendant’s proposed initial definition, in contrast, does not offer too little description but too much.
That proposed definition, as noted, was that “a brake operatively connected to the electric motor” means “[t]he brake
is connected to the electric motor and, when activated, applies frictional force to stop rotational movement of the
motor shaft.” This proposed definition imports limitations from the specification into the claim rather than giving
the term its full meaning. This is improper, Innova/Pure Water teaches.
- 29 -
single-switch operation such that the brake and electric motor may be energized and deenergized
simultaneously.” ‘819 patent, col 5, ll. 6–9.
As noted, under the doctrine of claim differentiation, the presumption is that the
independent claim (claim 1) is not restricted by the added limitation in the dependent claim
(claim 5). Phillips, 415 F.3d at 1315; Acumed LLC, 483 F.3d at 806.
iii
In sum, both parties definitions will be rejected. Instead, the phrase “a brake operatively
connected to the electric motor” will be defined to mean “a brake arranged in a manner that is
capable of braking the motor.”
6
The sixth disputed term comes from dependent claim 18, which provides in pertinent
part: “the electric motor and the brake are disposed along a common axis.” ‘819 patent, col. 6, l.
32–33. These 12 disputed words give rise to at least two sub-disputes. Before those subdisputes are taken up, however, the point of agreement should be noted. The parties agree that
the phrase “a common axis” means the “same” axis. Now on to the disagreements.
a
The first disagreement is what “the brake” means. Defendant asserts that the phrase
should be interpreted to include an “armature plate, friction disc, and hub.”
For reasons detailed above, the Court will decline to define the term “brake,” much less
define it to be limited to a brake with an “armature plate, friction disc, and hub.” Briefly, the
specification provides:
The preferred brake assembly for use with the present invention, as shown in
FIGS. 6 and 7, is a spring-set disc brake, such as that available from Rexnord
Corporation of Milwaukee, Wis. This brake is a spring-applied, power-released
brake to facilitate automatic locking of the electrical motor. The motor shaft
- 30 -
includes an aperture formed therein. The motor shaft is inserted into the hub, and
aperture is aligned with hub aperture, and a pin inserted therethrough for engaging
the hub and motor shaft. As shown in FIG 7., the hub is hexagonally shaped. A
friction disc is secured peripherally about the hexagonally shaped hub. A spring
applies a braking force against the armature plate for squeezing the friction disc
against the pressure plate.
Id. col. 3, ll. 54–67. While this is a preferred embodiment, nothing in the language of claim
limits a brake to this type of embodiment. Claim 18 is a dependent claim, providing in full: “The
direct-drive actuator assembly of claim 17, wherein the electric motor and brake are disposed
along a common axis.” Id. col. 6, ll. 34–36. “Brake,” full stop. Not a brake with an “armature
plate, friction disc, and hub.” Not a brake available from Rexnord Corporation of Milwaukee,
Wisconsin. Just a brake.
Likewise, claim 17, which is expressly incorporated into dependent claim 17, refers
simply to a “brake.” No more, no less. And this is precisely how the Court will interpret the
term.
Reinforcing this conclusion is dependent claim 19, which limits claim 18 by providing:
“The direct-drive actuator assembly of claim 18, wherein the brake is a spring-applied, power
released type brake.” ‘819 patent, col. 6, ll. 34–36. Nothing in claim 18, however, limits the
brake to this particular type of brake. In that claim, it’s just a brake. And that is how the Court
will construe it.
b
The next disagreement is what the axis of the motor means in this context. Plaintiff
asserts that it means simply that; Defendant asserts that it means something more precise —
specifically, the axis of the electric motor is “the motor shaft.” Yet again, nothing in dependent
claim 18 or independent claim 17 limits the motor’s common axis with the brake to the motor’s
shaft.
- 31 -
Claim 17 provides that the brake is “operatively connected in a stacked relationship with
the electric motor.” ‘819 patent, col. 6, ll. 26–27. Claim 18 imposes an additional limitation:
“the electric motor and brake are disposed along a common axis.” Id. col. 6, ll. 32–33. This
limitation does not, however, limit the claimed invention to one in which “the electric motor[’s
shaft] and brake are disposed along a common axis.” And the Court will not read this limitation
into claim 18.
Rather, the term “the electric motor and the brake are disposed along a common axis”
will be defined to mean “the electric motor and brake have the same axis.” (“Common,” after
all, has multiple common meanings. And “disposed along,” an ambiguous phrase, is best
disposed of.)
7
The seventh disputed term is the phrase “transmission housing” in claims 1 and 17. ‘819
patent, col. 4, l. 53, col. 6, l. 21. The parties represent that they “agree that the transmission
housing and cover are separate items.”
Plaintiff’s proposed definition of “transmission housing” is “[a] housing that contains the
transmission gears.”
Defendant initially proposed “[a]n assembly of gears, armature shaft,
output shaft and cover, exclusive of the motor and brake.” In its brief, however, Defendant
writes: “In an effort of compromise . . . [Defendant] drops its argument that ‘transmission
housing’ includes the armature shaft.”
a
To understand why Defendant is correct that the definition of “transmission housing”
includes the transmission gears and output shaft but excludes the motor and brake, reference
- 32 -
must be made to the claims’ “internal logic.” Markman, 517 U.S. at 389; see id. at 390
(instructing that a claim should be construed so as to “preserve the patent’s internal coherence”).
i
First, claim 1. As noted, claim interpretation begins “with the language of the claims.
The general rule is, of course, that terms in the claim are to be given their ordinary and
accustomed meaning.” Johnson Worldwide Assoc., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed.
Cir. 1999) (citations omitted ) (collecting cases)); see also Envirotech Corp. v. Al George, Inc.,
730 F.2d 753, 759 (Fed. Cir. 1984) (“It is elementary that resort must be had in the first instance
to the words of the claim which define the metes and bounds of the invention.”).
The body of claim 1 has three paragraphs. The first is “a transmission housing having an
output shaft for directly driving the tarp spool, and further having transmission gears therein
engaging the output shaft.” ‘819 patent, col. 4, l. 53–55. The second is “an electric motor
operatively connected to the transmission gears for actuating the tarp spool.” Id. col. 4, ll. 56–
57. And the third is “a brake operatively connected to the electric motor.” Id. col. 4, ll. 58–59.
The text of the claim thus provides that the transmission housing includes two structures
“therein” — the transmission gears and output shaft. The electric motor, in contrast, is not
expressly included “therein.” Rather, it is “operatively connected” to the transmission gears,
which, in turn, are situated within the transmission housing.
Likewise, the brake is not expressly included within the transmission housing. Rather, it
“operatively connected” to the motor, which is operatively connected to the transmission gears,
which, in turn, are situated within the transmission housing.
The internal logic of claim 1 is inescapable. Hazarding the risk of stating the selfevident, the ordinary meaning of a “housing” that contains a pair of objects “therein” is that the
- 33 -
housing contains just that — two objects. Not four. Not forty. Not four thousand. Two. The
transmission gears and output shaft.
The phrase “transmission housing” in claim 1 will therefore be defined as “a housing that
includes the transmission gears and output shaft and excludes the electric motor and brake.”
ii
The phrase “transmission housing” in claim 17 will be given the same definition. To
elaborate, the body of claim 17 contains four paragraphs. The first is “a transmission housing
having an output shaft for directly driving the tarp spool, and a plurality of transmission gears.”
‘819 patent, col. 6, l. 21–23. The second is “an electric motor operatively connected to the
transmission gears.” Id. col. 6, ll. 24–25. The third is “a brake operatively connected in a
stacked relationship with the electric motor.” Id. col. 6, ll. 26–27. And the fourth is “a cover
secured to the transmission housing for enclosing the electric motor and brake.”
Again, the plain language of this claim is that the transmission housing has two objects:
transmission gears and an output shaft. It does not have a motor. It does not have a brake. To
preserve the claim’s internal logic, it will be defined just so.
b
The phrase “transmission housing” in both claims 1 and 17 will be defined as “a housing
that includes the transmission gears and output shaft and excludes the electric motor and brake.”
8
The eighth and final disputed term is the phrase “a cover . . . for enclosing the electric
brake and motor” in claim 17. ‘819 patent, col. 6, ll. 29–30. Defendant’s proposed definition is
“[a] cover that encloses the brake and the motor, but not the transmission gears.” Plaintiff’s
initially proposed definition was “[a] housing that covers at least the brake and motor.” In light
- 34 -
of Defendant’s suggestion, however, Plaintiff agrees to substitute the word “encloses” for
“covers,” making the proposal“[a] housing that encloses at least the brake and motor.”
For this disputed term, like the preceding disputed term, the internal logic of the claim is
the key to interpretation. As noted, the body of claim 17 contains four paragraphs. The first
provides the transmission housing contains two objects: transmission gears and an output shaft.
‘819 patent, col. 6, l. 21–23.
The second provides that the electric motor is “operatively
connected” to the transmission gears. Id. col. 6, ll. 24–25. The third provides that the brake is
“operatively connected” and “in a stacked relationship” with the motor. Id. col. 6, ll. 26–27.
And the fourth provides that the cover is “secured to the transmission housing for enclosing the
electric motor and brake.” Id. col. 6, ll. 29–30.
The transmission housing, as noted, includes the transmission gears and output shaft and
excludes the electric motor and brake. The cover, in turn, encloses the motor and brake — but
not the transmission gears or output shaft.
The phrase “a cover . . . for enclosing the electric brake and motor” will be defined as “a
housing that encloses the brake and motor and does not enclose the transmission gears or output
shaft.”
III
Accordingly, it is ORDERED that the parties’ agreed definitions are ADOPTED and it is
further ORDERED that:
(1)
“A direct-drive actuator assembly” means “[a]n assembly that drives a tarp
spool without chains or belts.”
(2)
An “output shaft for directly driving the tarp spool” means “[t]he
transmission housing output shaft is connected to and rotates the tarp
spool.”
- 35 -
(3)
“[A]n electric motor operatively connected to the transmission gears for
actuating the tarp spool” means “[a]n electric motor that transmits
movement of the motor shaft though gears to the tarp spool to wind and
unwind the tarp.”
(4)
“[A brake for] automatically braking the motor when the motor is turned
off” means “[t]he brake is off when power is supplied to the motor, and
the brake is on when power is not supplied to the motor.”
(5)
“[A] cover secured to the transmission housing by the plurality of bolts
over the electric motor and brake” means “[t]he cover over the brake and
motor is attached to the transmission housing by the same two or more
bolts that attach the brake to the motor.” And
(6)
“[A brake] in a stacked relationship with the electric motor” means “[t]he
brake and motor are adjacent to each other and the brake is aligned with
the motor so that one end of the brake faces an end of the motor.”
It is further ORDERED that the following definitions are ADOPTED for the eight
disputed terms:
(1)
The preamble phrase “for a truck bed tarp system” in claims 1 and 17 is not a
limitation on those claims.
(2)
The phrase “tarp spool” in claims 1 and 17 means “a spindle or cylinder that
rotates around its axis to wind and unwind tarp material.” (Defendant’s proposed
limitation that the tarp spool is “mounted” and “stationary” is rejected.)
(3)
The dispute over the meaning of the preamble phrase “truck bed tarp system” in
claims 1 and 17 is moot (as the phrase is not a limitation on those claims).
(4)
The phrase “a brake” in claims 1 and 17 does not require construction (as it is a
non-technical term written in plain English).
(5)
The phrase “a brake operatively connected to the electric motor” in claim 1 (and
the related phrase in claim 17) means “a brake arranged in a manner that is
capable of braking the electric motor.”
(6)
The phrase “the electric motor and the brake are disposed along a common axis”
in claim 18 means “the electric motor and brake have the same axis.”
(7)
The phrase “transmission housing” in claims 1 and 17 means “a housing including
an output shaft and transmission gears and excluding the electric motor and
brake.”
- 36 -
(8)
The phrase “a cover . . . for enclosing the electric brake and motor” means “a
housing that encloses the brake and motor and does not enclose the transmission
gears or output shaft.”
s/Thomas L. Ludington
THOMAS L. LUDINGTON
United States District Judge
Dated: July 22, 2013
PROOF OF SERVICE
The undersigned certifies that a copy of the foregoing order was served
upon each attorney or party of record herein by electronic means or first
class U.S. mail on July 22, 2013.
s/Tracy A. Jacobs
TRACY A. JACOBS
- 37 -
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?