AutoForm Engineering GmbH v. Engineering Technology Associates, Inc.

Filing 67

MEMORANDUM OPINION and ORDER re 29 Opening Claim Construction Brief, 25 Statement and 30 Markman Brief. Signed by District Judge Arthur J. Tarnow. (MLan)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
AUTOFORM ENGINEERING GMBH,
PLAINTIFF,

CASE NO.

10-14141

v.

ARTHUR J. TARNOW
SENIOR UNITED STATES DISTRICT JUDGE

ENGINEERING TECHNOLOGY
ASSOCIATES, INC.,

R. STEVEN WHALEN
MAGISTRATE JUDGE

DEFENDANT.
_____________________________/
MEMORANDUM OPINION AND ORDER
I. Introduction
Before the Court are Plaintiff’s Opening Claim Construction Brief [29] and
Defendant’s Markman Brief [30]. The parties have also submitted a Joint Claim
Construction Statement [25], which identifies disputed words or phrases within the
‘939 and ‘929 patents now at issue. The Court held a hearing on these matters on
January 19, 2012 and the briefs were taken under advisement.
The Court construes the disputed claim terms as set forth below.

II. Background
Plaintiff AutoForm, a Swiss corporation, possesses two patents now at issue.
The ‘939 patent, titled “Method for Designing a Tool for Deep Drawing and Tool for
Deep Drawing of Sheet Metal,” was issued by the United States Patent and Trademark

Office (USPTO) on November 24, 2009. The second patent, the ‘929 patent, titled
“Method for the Designing of Tools,” was issued by the USPTO on February 22,
2011.
On October 15, 2010, Plaintiff filed its Complaint [1], alleging that Defendant
Engineering Technology Associates (ETA) is infringing on the ‘939 patent by making,
using, selling, and/or offering to sell certain software. On March 16, 2011, Plaintiff
filed a Second Amended Complaint [21], adding an identical claim against Defendant
ETA as to the ‘929 patent. These patents are related and share a common
specification.1
The patents pertain to computer software that is used to create a tool, which is
then used to form sheet metal into different objects, including automobile parts. The
patents focus on the creation of the die portion of this tool. Generally, the die is
custom made for each type of object, or automobile part, to be formed from the sheet
metal. The die is composed of a component area, an addendum area, and a binder area.
The patent claims now at issue revolve around the creation of this addendum area,
including the use of sectional profiles to create the addendum area.

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While the patents are distinct in several ways, the language at issue in the
instant briefings is identical in both patents, as are the claim construction disputes
now before the Court. Therefore, while the parties and the Court refer to the ‘939
patent, the resolution of the claim construction disputes apply to both patents.
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III. Analysis
Title 35 U.S.C. § 271(a) states: “whoever without authority makes, uses, sells,
or offers to sell any patented invention, within the United States or imports into the
United States any patented invention . . . , infringes the patent.”
Adjudication of a patent infringement action requires a two-step analysis.
First, the Court must interpret the claim in what is known as a Markman hearing. See
Markman v. Westview Instruments, 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d.,
517 U.S. 370 (1996). Claim interpretation is an issue of law reserved for the Court.
Id. at 979; see also Fromson v. Anitec Printing Plates, Inc., 132 F.3d 1437, 1441-42
(Fed. Cir. 1997), cert. denied, 525 U.S. 817 (1998). Once the claim has been
interpreted, the second step is an infringement analysis, or determining whether the
claims as interpreted encompass the accused device. Mannesman Demag Corp. v.
Engineered Metal Products, 793 F.2d 1279, 1282 (Fed. Cir. 1986). Infringement is
an issue of fact, which in this case has been reserved for a jury.
Within the first step of claim interpretation, it is a “bedrock principle of patent
law that the claims of a patent define the invention to which the patentee is entitled the
right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)(en
banc)(internal quotation marks and citations omitted). Disputed terms must be given
the “ordinary and customary meaning” as understood by “persons of ordinary skill in
the art.” Id. at 1312-13 (citations omitted). In claim construction, the Court relies first
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on intrinsic evidence, namely the patent claims themselves, the specification, and any
prosecution history that is in evidence. See Teleflex, Inc., v. Ficosa North Am. Corp.,
299 F.3d 1313, 1324-25 (Fed. Cir. 2002). To the extent that extrinsic evidence, such
as dictionaries, treatises, or expert testimony, is not inconsistent with the intrinsic
record, the Court may further rely on extrinsic evidence to more fully understand the
underlying subject matter of the patent. See Phillips, 415 F.3d at 1317-18; BrookhillWilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003).
All of the terms now disputed by the parties appear within claims one, four, and
five of the‘939 patent. These claims are listed below, with the disputed terms in bold
italics:
1.

A method for designing a tool for deep drawing of sheet metal to
form a sheet metal component having a predefined component
geometry, said tool comprising a die, a binder and a punch,
whereby the binder is used to fix the sheet metal in an edge zone
of the die, before the sheet metal is pressed in a drawing direction
by the means of the punch into the die, said tool comprising at
least one addendum zone surrounding the component, said
addendum zone is generated by a method comprising the
following steps:
a.

arranging along the component edge at a distance from one
another several sectional profiles directing away from the
component edge;

b.

whereby the sectional profiles are parameterized by the
means of profile parameters, the profile parameters being
scalar values;

c.

laterally interconnecting the sectional profiles by a
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continuous surface to form the geometry of the addendum
zone of the tool, whereby said addendum zone
complements the component geometry in the edge zone and
runs into the component and the binder with a continuous
tangent.
4.

The method according to claim 1, wherein a change of the
characteristic line in a controlled manner influences several
adjacent sectional profiles.

5.

The method according to claim 1, wherein the sectional profile is
parameterized by profile parameters out of the group of the
following elements: component run-off length, component run-off
radius, flange length, flange angle, draw bar height, draw bar
width, draw bar radius, step height, step radius, wall angle, die
radius.

1.

“Surrounding”

The parties first dispute the term “surrounding” as it is used in claim one. The
term is not explicitly defined within the specification. Plaintiff’s proposed
construction of the term “surrounding” is: “one or more surfaces that extend along
the component between the component and the binder.” Defendant’s proposed
construction of the same term is: “one or more surfaces that encircle the component
between the component and the binder.” As indicated by the bolded phrases, the
parties dispute whether the term “surrounding” means to “extend along” or to
“encircle.”
Defendant argues that intrinsic evidence in the form of the figures contained
within the specification, the prosecution history, as well as the ordinary meaning of
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the term “surrounding”– to extend on all sides of simultaneously; encircle– support
its construction of the term. However, while the figures within the specification
include an addendum on all sides of the component, the specification presents these
figures as examples and should not be used to limit the patented material to only those
examples. See Phillips v. AWH Corp., 415 F.3d 1303, 1323(Fed. Cir.
2005)(“[A]lthough the specification often describes very specific embodiments of the
invention, it is improper to confine the claims to those examples.”)
Defendant also points to the prosecution history, in which Plaintiff
differentiated its claimed invention from prior art by explaining that the claimed
invention involves a “continuous tangent” that creates a “complete or ‘closed’
addendum zone.” However, this “complete” addendum zone refers to the absence of
a gap between the component and addendum, not to an addendum that is closed
around the component.
Finally, as Plaintiff notes, Defendant’s construction does not allow for internal
addendums, as described in the specification and shown in the figures. As such,
Defendant’s extrinsic evidence is inconsistent with the intrinsic record and cannot
support Defendant’s construction of the term “surrounding.”
Alternatively, Plaintiff’s construction of the term “surrounding” is consistent
with the intrinsic evidence, does not limit the claim to the embodiments described in
the specification, and allows for addendum zones that do in fact extend along all sides
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of the component. Therefore, the Court construes the disputed term “surrounding” to
mean “one or more surfaces that extend along the component between the component
and the binder.”
2.

“Several”

Next, the parties dispute the construction of the term “several.” The term is
used in claims one and four of the ‘939 patent. Claim one, subsection (a) states:
arranging along the component edge at a distance from one another
several sectional profiles directing away from the component edge;
Claim four states:
The method according to claim 1, wherein a change of the characteristic
line in a controlled manner influences several adjacent sectional profiles.
Plaintiff argues that the term “several” should be read to mean “two or more.”
Defendant asserts that “several” must interpreted as “multiple; more than two.”
In support of its construction, Plaintiff argues that the term “several” is used in
contrast to the term “individual,” and therefore simply means “two or more.” Plaintiff
basis this argument on a portion of the specification that states: “[s]ince a change of
a characteristic line in a controlled manner influences several adjacent sectional
profiles, such a change is significantly easier to implement than by means of the
(manual) changing of individual sectional profiles.” Plaintiff also relies on a MerriamWebster Collegiate Dictionary defining “several” as “more than one.”

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Defendant instead relies on the American Heritage Dictionary, which defines
“several” as “multiple; more than two.” Defendant asserts that this construction is
consistent with the ordinary meaning of the term “several.” Defendant also argues that
this “common parlance” definition of “several” is consistent with the finding of the
court in Laboratoires Perouse, S.A.S. v. W.L. Gore & Assoc., 528 F. Supp. 2d 362,
390 (S.D.N.Y. 2007). The only intrinsic evidence presented by Defendant is a
sentence within the prosecution history in which Plaintiff differentiated the claimed
invention from prior art stating, “the indication of a few sectional profiles is sufficient
to be able to then interpolate the sectional profiles from it.” Given that this sentence
does not include the term “several,” it is unclear how it supports Defendant’s
construction.
Like the court in Laboratoires Perouse, the parties’ dictionary definitions are
ambiguous, as the Merriam-Webster Dictionary provides definitions for “several” as
both “more than one” and “more than two but fewer than many.” However, Plaintiff
is correct in that the specification draws a distinction between “several” sectional
profiles and an “individual” sectional profile. Therefore, the Court construes the term
“several” to mean “two or more.”
3.

“Continuous”

Third, the parties dispute the meaning of the term “continuous” within the first
portion of claim one, subsection (c). This portion of the claim states, “laterally
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interconnecting the sectional profiles by a continuous surface to form the geometry
of the addendum zone of the tool.”
Plaintiff’s proposed construction of the term “continuous” is “generating an
uninterrupted surface that laterally interconnects between two or more sectional
profiles to form the geometry of the addendum zone of the tool.” Defendant’s
proposed construction is “generating a single uninterrupted surface that laterally
interconnects between multiple; more than two sectional profiles to form the geometry
of the addendum zone of the tool.” Because the construction of “several” has already
been decided by the Court above, the dispute here focuses on the inclusion or
exclusion of the term “single.” See supra at 7-9.
In general, “an indefinite article ‘a’ or ‘an’ in patent parlance carries the
meaning of ‘one or more’ in open-ended claims containing the transitional phrase
‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir.
2000). Moreover, “[u]nless the claim is specific as to the number of elements, the
article ‘a’ receives a singular interpretation only in rare circumstances when the
patentee evinces a clear intent to so limit the article.” Id. Defendant argues that a clear
intent to limit the article “a” to a single surface is shown through the figures contained
within the specification, which depict a single surface. Defendant also argues that the
prosecution history and specification support the inclusion of the term “single”
because Plaintiff differentiated the claim invention from prior art, which used multiple
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surfaces.
Defendant’s arguments here fail because the claims should not be limited to the
examples provided in the specification and because the distinction drawn between the
prior art and the claimed invention does not show a “clear intent” to limit the claim
to a single surface. See Phillips, 415 F.3d at 1323. Moreover, as Plaintiff argues,
Defendant has agreed that the phrase “at least one addendum zone” refers to “one or
more surfaces.” The inclusion of the term “single” could run counter to this
construction. Therefore, the Court construes the disputed term “continuos” to mean
“[g]enerating an uninterrupted surface that laterally interconnects between two or
more sectional profiles to form the geometry of the addendum zone of the tool.”
4.

“Continuous Tangent”

The parties fourth claim dispute concerns the second portion of claim one,
subsection (c). This portion of the claim states, “whereby said addendum zone
complements the component geometry in the edge zone and runs into the component
and the binder with a continuous tangent.”
Plaintiff’s proposed construction of this portion of the claim is:
The addendum zone meets the component along a common boundary
line and, for any point on this line, the slope of the addendum zone and
the slope of the component are the same. The addendum zone also meets
the binder along the common boundary line and, for any point on this
line, the slope of the addendum zone and the slope of the binder are the
same.
Defendant’s construction of this portion of claim one, subsection (c) is identical, but
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adds the sentence, “[t]he two addendum zone slopes at corresponding points on the
common boundary lines define a single, uninterrupted line.”
Given Defendant’s inclusion of the phrase “single, uninterrupted line,” it may
appear that the parties again dispute the term “continuous” within this second portion
of claim one, subsection (c). However, given large portion of the construction agreed
upon by the parties, the dispute focuses on whether the term “and” is to mean that the
addendum zone runs into the component with a continuous tangent and also runs into
the binder with a continuous tangent, or that the addendum zone runs into both the
component and binder with the same continuous tangent. It is in making the latter
argument that Defendant’s construction includes the additional sentence.
However, as Plaintiff argues, none of the embodiments provided as examples
within the specification include this additional limitation. In addition, the agreed upon
construction takes the term “continuous” as well as the term “and” into account by
describing a continuous tangent between the addendum zone and the component, and
a continuous tangent between the addendum zone and the binder. Defendant argues
that Plaintiff’s construction would provide for two opposing definitions of the term
“continuous.” However, the constructions do not contradict, and instead define the
terms similarly. Moreover, Defendant’s additional sentence goes beyond construing
“continuous” to having an identical definition, it also interprets “and” in such a way
that is inconsistent with the portion of the construction agreed upon my both parties.
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Therefore, the Court construes the second portion of claim one, subsection (c)
to follow the construction agreed upon by both parties, and without the additional
sentence proposed by Defendant.
5.

“Group Of”

Lastly, the parties dispute the terms “sectional profile” and “group of”
in claim five of the ‘939 patent. Claim five states:
The method according to claim 1, wherein the sectional profile is
parameterized by profile parameters out of the group of the
following elements: component run-off length, component run-off
radius, flange length, flange angle, draw bar height, draw bar
width, draw bar radius, step height, step radius, wall angle, die
radius.
Plaintiff’s proposed construction for the phrase “group of” is “two or more
profile parameters selected from the following group of elements.” In contrast,
Defendant’s construction defines the term “sectional profile” and the phrase “group
of,” proposing the following construction: “multiple; more than two sectional profiles
containing all of the following parameter elements: component run-off length,
component run-off radius, flange length, flange angle, draw bar height, draw bar
width, draw bar radius, step height, step radius, wall angle, die radius.”
Defendant argues that the phrase “multiple; more than two” should be included
in the construction because it is the definition Defendant proposed for the term
“several,” a term which was used to modify the term “sectional profiles” in claims one
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and four. However, the term “several” is not included in the wording of claim five.
Therefore, it is unnecessary to include its definition within the construction of claim
five. Defendant then argues that the term “group of” is readily understood to contain
all of the elements listed within claim five. Defendant relies on case law holding that
“group of” “does not place any limits...on the elements following this broad
designation.” Gillette Co. V. Energizer Holdings, Inc., 405 F.3d 1367, 1372 (Fed. Cir.
2005). In making this argument, Defendant asserts that Plaintiff’s construction of “two
or more” impermissibly narrows the scope of the claim. However, not only does the
claim include the plural of “profile parameters,” but Defendant’s construction “all of
the following” also limits or narrows the claim language
In supporting their constructions, both parties rely on a portion of the
specification that states, “[t]hese sectional profiles are parameterized by forming
technology scalar values...such as, for example component run-off length, flange
length, flange angle, draw bar height, draw bar width, draw bar radius, step height,
wall angle, die radius, etc.” Here, the language “such as, for example” supports
Plaintiff’s construction of “selected from the following group of elements,” as it
suggests that the elements are not all mandatory. Moreover, as Plaintiff argues, the
dictionary definition of the phrase “out of,” which modifies “group of,” is “used as
a function word to indicate choice or selection from a group.” This definition is
consistent with the intrinsic evidence as well as the ordinary meaning of the phrase.
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Therefore, the Court construes the disputed portions of claim five to mean “two
or more profile parameters selected from the following group of elements.”

IV. Conclusion
The Court construes the disputed claim terms as set forth above.

SO ORDERED.
s/Arthur J. Tarnow
ARTHUR J. TARNOW
SENIOR UNITED STATES DISTRICT JUDGE
Dated: October 30, 2013

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