LG ELECTRONICS U.S.A., INC. et al v. WHIRLPOOL CORPORATION et al

Filing 124

MARKMAN OPINION. Signed by Chief Judge Garrett E. Brown, Jr on 4/25/2011. (eaj)

NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
__________________________________________
)
)
)
)
Plaintiffs,
)
)
v.
) Civil Action No. 09-5142 (GEB-ES)
)
WHIRLPOOL CORP. AND ANCHOR
)
APPLIANCE, INC.,
)
MARKMAN OPINION
)
Defendants.
)
_________________________________________ )
LG ELECTRONICS U.S.A., INC. AND
LG ELECTRONICS INC.,

BROWN, Chief Judge
This matter comes before the Court on a request from the parties for claim construction in
a Markman hearing. The parties submitted a Joint Claim Construction Chart (“JCC”) that set
forth the parties’ proposed constructions for the forty-seven terms at issue and the intrinsic
evidence supporting those constructions; the parties also submitted opening and responsive
briefs. (Doc. Ents. 72, 86, 87, 89, 90). After reviewing the parties’ submissions, the Court held
a Markman hearing on March 18, 2011 and April 1, 2011. The Court construed the majority of
the claims at the hearing and this opinion addresses only the remaining terms.
I.

BACKGROUND
This is a patent infringement case concerning technologies for French door refrigerators

with external ice-dispensers on one of the French doors. Plaintiffs filed this action on October 7,
2009, asserting that Whirlpool infringed one patent, but later amended their complaint to assert
1

infringement of the other three patents in the action. There four patents at issue are – United
States Patent Numbers 7,392,655 (“the ‘665 patent”), 7,484,382 (“the ‘382 patent”), 7,428,820
(“the ‘820 patent”), and 7,490,475 (“the ‘475 patent”). The patented inventions purport to solve
problems in the art with the fact that the freezer on these refrigerators is on the bottom, which
makes it difficult to dispense the ice traditionally produced there to the doors above. The general
solution posed by the patents is to produce ice in a segregated compartment in the refrigerator
and dispense the ice to the dispenser on the door.
The ‘655 patent is directed generally to an air duct system with fans and dampers in a
French door refrigerator. The patent asserts that the air duct system allows cold air generated in
a freezing compartment to be routed to the refrigerating compartment and ice compartment,
which is mounted in the top portion of the refrigerator.
The remaining patents, the ‘382, ‘820 and ‘475 patents share a common specification that
is generally directed toward an ice and water dispensing system on the French door refrigerator.
The claims of the ‘382 patent claim structures for transporting ice from the ice compartments to
the dispensers on the door. The ‘820 and ‘475 patents claim differing designs that deliver water
to the ice makers and dispensers.

2

II.

DISCUSSION
A.

Standard of Review

The first step in a patent infringement analysis is to define the meaning and scope of the
claims of the patent. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)
(en banc), aff’d, 517 U.S. 370 (1996). Claim construction, which serves this purpose, is a matter
of law exclusively for the court. Id. at 979. The focus of a court’s claim construction analysis
must begin and remain on the language of the claims, “for it is that language that the patentee
chose to use to ‘particularly point[] out and distinctly claim[] the subject matter which the
patentee regards as his invention.’” Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d
1323, 1331 (Fed. Cir. 2001) (quoting 35 U.S.C. § 112, ¶ 2).
Generally, there is a presumption that the words of a claim will receive the full breadth of
their ordinary meaning. NTP, Inc. v. Research In Motion, Ltd., 392 F.3d 1336, 1346 (Fed. Cir.
2004). The ordinary meaning may be derived from a variety of sources; including intrinsic
evidence, such as the claim language, the written description, drawings, and the prosecution
history; as well as extrinsic evidence, such as dictionaries, treatises, or expert testimony. Id.
When determining the meaning of the terms, the court must primarily consider the
intrinsic evidence, including the specification and prosecution history. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996). The specification “is the single
best guide to the meaning of a disputed term.” Id. at 1587. However, it is improper to import
limitations from the specification into the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1320,
1323 (Fed. Cir. 2005); Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1364-65 (Fed.
Cir. 2003). Courts “should also consider the prosecution history of the asserted patents” because

3

it “can inform the meaning of the claim language by demonstrating how the inventor understood
the invention and whether the inventor limited the invention in the course of prosecution.”
Telcordia Techs., Inc. v. Cisco Sys., 612 F.3d 1365, 1372 (Fed. Cir. 2010); Phillips, 415 F.3d at
1317. Courts should, however, grant the communications in the prosecution history less weight
than the specification because they are negotiations and “often lack[] the clarity of the
specification.” Phillips, 415 F.3d at 1317.
In addition to the specification and prosecution history, a court may also consider
extrinsic evidence to determine the meaning of a term when an analysis of the intrinsic evidence
alone does not resolve the ambiguities of a disputed claim term. Vitronics Corp., 90 F.3d at
1582-83. However, such evidence should be accorded less weight than the intrinsic record and
should never be used to contradict the intrinsic evidence. Phillips, 415 F.3d at 1324.
B.

Analysis

The terms that remain to be construed are:
(1) proximate to;
(2) a damper configured to regulate air flow, from the ice compartment to the
refrigerating compartment, through an opening in the wall of the ice compartment
(3) damper is configured to enable regulation of a temperature associated with the
refrigerating compartment, through the opening in the wall of the ice compartment;
(4) ice transportation mechanism located within the ice compartment configured to
promote the movement of ice stored within the ice compartment through an outlet
defined in the ice compartment;
(5) ice transportation mechanism is configured to, when the first door is in the closed
position and the ice discharge duct is opened, transport ice stored within the ice
compartment to the dispenser through the first and second portions of the ice
discharge duct;
(6) wherein the ice discharge duct is selectively opened and closed such that ice can be
transferred to the dispenser positioned on the first door;

4

(7) the ice discharge duct is selectively opened and closed independent of the movement
of the first door;
(8) dispenser tube configured to guide liquid water to the dispenser; and
(9) dispenser tube being different than the ice maker tube.
These terms appear in a variety of claims in the four patents. The Court provides its
constructions and the reasons for those constructions below.
1. proximate to
‘665 patent, claims 10 and 32; ‘475 patent, claims 1, 2, 6, 7, 11, 12
LG’s Construction
in or very near

Whirlpool’s Construction
very near

(JCC at 8).
Both parties agree that the plain meaning of “proximate” means “very near” and does not
include being “in.” (LG’s Op. Br. at 17). Further, neither party alleges that people in the art
understand the term to mean anything other than “very near.” However, LG argues that the
patent uses the term in a broader sense so as to redefine the term by implication. (Id. at 18). LG
points to two inferences that can be drawn from the claims that suggest that “proximate” includes
being inside something. The Court finds that these inferences are insufficient demonstrate a
clear intent to redefine the term as required by the caselaw.
There is a presumption that the claim term be given the full breadth of its ordinary
meaning. NTP, Inc. v. Research In Motion, Ltd., 392 F.3d 1336, 1346 (Fed. Cir. 2004). While a
patentee may redefine the plain meaning of a term, such intent must be clear. Merck & Co, Inc.
v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005). The Federal Circuit has
“repeatedly encouraged claim drafters who choose to act as their own lexicographers to clearly
define terms used in the claims in the specification.” Sinorgchem Co. v. ITC, 511 F.3d 1132,

5

1136 (Fed. Cir. 2007). However, where the intent is clear, a redefinition may be accomplished
by implication.
There is no dispute that the patentee did not act as his own lexicographer in the
specification or, by repeated and consistent use, redefine the terms. However, Plaintiffs argue
that several inferences lead to the conclusion that “proximate” includes being “in.”
First, Plaintiffs argue that claim 10 of the ‘665 patent requires this construction. Claim
10 of the ‘665 patent claims “an evaporator positioned in the refrigerator body proximate to the
freezing compartment,” (‘665 patent, 14:22-28) (emphasis added), but claim 11, which depends
from claim 10, states that the “evaporator is positioned in the freezing compartment[.]” (‘665
patent, 14:27-31) (emphasis added). Because claim 10 must be broader than its dependent claim
11, this suggests that “proximate” includes being “in.”
The Court does not find this persuasive. The Court will not allow improper dependency
or poor drafting to inure to the benefit of the drafter, who was required to put the public on notice
of his invention. Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 781 (Fed. Cir.
2010) (purpose of claims is to notice the public of the scope of the invention). The patentee had
every reason to be careful with the wording he used in this ex-parte proceeding. He should not
be able to take advantage of such errors to suggest a “clear” redefinition of a term.
Further, while the specification does state in preferred embodiments that “the freezing
chamber 51 is provided with an evaporator 65” and speaks of a “first duct 70 for supplying the
cold air formed around the evaporator 65 in the freezing chamber 51,” (‘665 patent, 8:41-42;
931-34) (emphasis added), these are also less than clear. Given that the Figures these
descriptions purport to be describing show the evaporator partitioned from the portion labeled as

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the freezing chamber, these statements seem to refer only to the general location of the
evaporator. (‘665 patent, Fig. 6-9). 1
Second, Plaintiffs argue that excluding “in” from the definition of “proximate” would
read a preferred embodiment out of the claims in the ‘475 patent. Plaintiffs argue that all of the
relevant claims of the ‘475 patent list the “branch point,” which is where the water line splits into
a line supplying the ice-maker and a line supplying the water dispenser, as being “proximate to”
a wall of the refrigerator. (‘475 patent, 11:65-12:3; 12:8-13). However, the specification lists
tubes for the water line, 54, 55, and 58 as “preferably embedded into a rear side of an inner case
or an insulating material of the walls of the refrigerating chamber 3 so that they are not exposed
to the interior of the refrigerating chamber 3.” (‘475 patent at 8:29-34). This text describes
Figure 6:

1

The Court notes that LG does not argue that such a construction reads a preferred embodiment out of the claims.
(LG Op. Br. at 17-18; LG Resp. Br. at 5-7). However, even so, the Court finds that this language refers only to the
general position of the evaporator in the bottom of the refrigerating unit.
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(‘475 patent, Fig. 6) (red circle added). Labels 54, 55 and 58 are the tubes described and 54V
and 55V are valves. (‘475 patent, 8:13-15). In the circled area, there appears to be a branch
point within the wall of the refrigerator. Plaintiffs argue that this requires “proximate” to include
“in” or this preferred embodiment would be excluded from the claim and a claim construction
that excludes preferred embodiments “is rarely, if ever, correct and would require highly
persuasive evidentiary support.” Vitronics, 90 F.3d at 1583.
However, it is less than clear that the picture depicts a branch point. As argued by
Defendants, the description of Figure 6 does not require that there even be a branch point in the
preferred embodiment. Earlier in the description of Figure 6, where the filter and the tubes are
described, the description does not use a branch point, but lists it as optional, not preferred:
The water purified in the filter 52 is transferred to the icemaker 24 and a water
tank 56 through an icemaker tube 54 and a tank tube 55 respectively. . . . Of
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course, the water may be supplied in such a manner that a single tube stems
from the filter 52 and the icemaker tube 54 and the tank tube 55 are branched
off through a single valve.
(‘475 patent, 8:10-18) (emphasis added). Further, if this configuration depicts the branch point,
it certainly does not depict them as branched through a single valve, as the valves 54V and 55V
are depicted as small boxes, not as a possible split in the line.
Even if the picture happens to depict a branch point, it is not a necessary part of the
preferred embodiment. The passage mentioning that the tubes are preferably embedded in the
walls does not mention a branch-point and the language quoted above suggests that it is optional.
As such, part of the preferred embodiment is tubes without a branch point. This portion of the
preferred embodiment could be depicted.
However, it cannot be disputed that only embodiments with branch-points are claimed in
the ‘475 patent and, therefore, separate tubes coming from the filter are not. This might lead to
the entirety of this preferred embodiment (‘475 patent, 5:37-40) being read out of the claims. The
logic of this argument is this: If it is undisputed that branch points are the only sub-embodiments
claimed, then the embedded tubes of this preferred embodiment described in the discussion of
Figure 6 must include a branch point somewhere, otherwise the construction reads a preferred
embodiment out of the claims.
The Court’s construction would not necessarily read this embodiment out of the claims.
A sub-embodiment could be part of the claims. For example, a refrigerator with a branch point
valve abutting the top of the refrigerator, with the tubes exiting the valve and entering the wall of
the refrigerator, would fall within the claims and would reflect the preferred embodiment. 2

2

Any argument that every sub-embodiment of a preferred embodiment must be present in the claims must fail on
this specification. There is no question that the specification discloses a sub-embodiment without a branch point.
However, only branch points are claimed.
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As such, the construction does not necessarily read a preferred embodiment out of the
claims. The Court further notes that even if this construction read a preferred embodiment out of
the claims, the presumption from Vitronics is mitigated here. The fact that the ‘475 patent does
not claim the preferred embodiment does not necessarily mean that the patentee did not claim the
preferred embodiment in any of his patents. Indeed, the ‘820 patent, which has the same
specification, claims embodiments that do not require a branch point.
With this issue avoided, there is no reason to redefine the term. Both parties agree that
the plain meaning of the term “proximate” means “very near.” Further, it cannot be disputed that
the patentee did nothing to clearly define the term – implications buried in claim dependency and
inclusion of what might, or might not, be preferred embodiments simply do not qualify. Merck,
395 F.3d at 1370 (redefinition must be clear); Helmsderfer v. Bobrick Washroom Equipt., Inc.,
527 F.3d 1379, 1381 (Fed. Cir. 2008). “Patent claims function to delineate the precise scope of a
claimed invention and to give notice to the public, including potential competitors, of the
patentee's right to exclude.” Haemonetics Corp.., 607 F.3d at 781; see also Markman v.
Westview Instruments, Inc., 517 U.S. 370, 373 (1996). This purpose would be substantially
undermined if patentees could rely upon buried implications to redefine claim terms.

2.

a damper configured to regulate air flow, from the ice compartment to the
refrigerating compartment, through an opening in a wall of the ice
compartment
‘665 patent, claim 21

LG’s Construction
No construction necessary.

Whirlpool’s Construction
Indefinite.

Alternatively, “a damper that regulates the
flow of air from the ice compartment to the
refrigerating compartment through an
opening in the wall of the ice compartment”

Alternatively, “a damper that regulates the
flow of air that has first entered the interior
of the ice compartment as it flows to the
refrigerating compartment through an
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opening in a wall of the ice compartment”
(JCC at 12).
3.

damper is configured to enable regulation of a temperature associated with the
refrigerating compartment, through the opening in the wall of the ice
compartment
‘665 patent, claim 23

LG’s Construction
No construction necessary.

Whirlpool’s Construction
Indefinite.

Alternatively, “a damper that regulates the
refrigerating compartment temperature by
regulating the flow of air from the ice
compartment to the refrigerating
compartment through the opening of the ice
compartment”

Alternatively, “a damper that regulates the
refrigerating compartment temperature by
regulating the flow of air that has first
entered the interior of the ice compartment
as it flows to the refrigerating compartment
through an opening in a wall of the ice
compartment.”

(JCC at 13-14).
Stripped of the indefiniteness question, 3 the dispute between the constructions is whether
the flow of air must first enter the interior of the ice compartment before flowing to the
refrigerating compartment. Despite some illumination at oral argument, the Court is still
somewhat baffled by the significance of the difference in explicitly including this limitation. If
the damper regulates air flowing through a hole from the ice compartment to the refrigerating
3

The Court defers an indefiniteness determination because its dispositive effect and high burden of proof make it
more appropriate for summary judgment. There is a high burden of proof on a party challenging the patent based on
indefiniteness, which would be difficult to meet at this early stage. Indefiniteness is proven only “where an accused
infringer shows by clear and convincing evidence that a skilled artisan could not discern the boundaries of the
claim.” Halliburton Energy Servs., Inc., v. M-I LLC, 514 F.3d 1244, 1249-50 (Fed. Cir. 2008) (emphasis added).
Further, rather than giving meaning to a claim, as a Markman hearing is meant to do, indefiniteness invalidates the
patent claims entirely. Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1376 (Fed. Cir. 2001). This
dispositive effect is more appropriately tackled at summary judgment. Thus, this Court finds persuasive the
determinations of several other courts to defer indefiniteness until summary judgment. See, e.g., Intergraph
Hardware Techs. Co. v. Toshiba Corp., 508 F. Supp. 2d 752, 773 n.3 (N.D. Cal. 2007) (“[The] indefiniteness
argument is inappropriate at the claim construction stage.”); Pharmastem Therapeutics, Inc. v. Viacell Inc., 2003
U.S. Dist. LEXIS 877, at *2 n.1 (D. Del. Jan. 13, 2003) (“[T]he court will not address the defendants’ indefiniteness
argument at [the Markman stage].”). Indeed, the Federal Circuit in Halliburton, Exxon, and Datamize reviewed
courts that dismissed the case for indefiniteness at summary judgment, not at a prior Markman hearing. Halliburton,
514 F.3d at 1249; Exxon, 265 F.3d at 1373; Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.
Cir. 2005).

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compartment, that seems to necessarily imply that the air originated in the interior of the ice
compartment. Thus, the plain meaning of the term seems to amply impart this restriction. 4 In
sum, the Court does not see the practical difference between the two constructions.
However, because the parties continue to dispute the distinction, the Court will consider
it. The merits of the limitation involve an analysis of the recent prosecution history reexamining
the patent at issue. Whirlpool alleges that the LG disclaimed any other arrangement in
distinguishing the Tenmyo reference. However, because the plain meaning of the term
effectively differentiated the prior art, the Court finds that the patentee’s conduct in
reexamination does not amount to an unequivocal disavowal of a claim scope. Vizio, Inc. v. Int’l
Trade Comm’n, 605 F.3d 1330, 1339 n.6 (Fed. Cir. 2010) (disclaimer must be a clear and
unequivocal disavowal of claim scope); Linear Tech. v. Int’l Trade Comm’n, 566 F.3d 1049,
1057-59 (Fed. Cir. 2009) (same).
The prosecution history that Whirlpool relies upon is this. Faced with a rejection based
on Tenmyo, the patentee, in addition to alleging it predated Tenmyo, also distinguished it as
follows:
Below, claims 21-36 and 38-41 are addressed based on features recited by
claims 21 and 41. Specifically, independent claim 21 recites, among other
things, a damper configured to regulate air flow, from an ice compartment to a
refrigerating compartment, through an opening in a wall of the ice
compartment. Tenmyo, while disclosing a damper, contrasts with this aspect
of the claim since the Tenmyo damper regulates air flow from a source other
than an ice compartment.
(Nov. 29 reply to Sept. 29, 2010 Action; Durnham Cert. Ex. S; D.E. 86-5) (emphasis in
original). 5 As such, the patentee used the very language of the claim, that the air came “from an

4

On the other hand, if the limitation is implicitly in the plain meaning, no harm can accrue from including it.
The patentee’s amended response of March 22, 2011, is identical to the November 29, 2010 reply in all material
respects. In fact, other than some attempts to shorten the response, the language is a copy-paste of the prior
response.
5

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ice compartment,” to distinguish the prior art. When the patentee uses the unqualified language
of the claims to distinguish the prior art, that cannot be said to disclaim any of the scope of the
claims.
When the patentee elaborates, he points to the figure from Tenmyo reproduced below:

(Red circle added). The patentee explains that the fan 31, sends some air directed out of the page
to the icemaker compartment, and some to the right to the damper 16. (Id. at 41). As such, the
patentee argued that the fan splits the air and the air coming to the damper does not come from
the ice compartment at all, but is a separate stream from the one that flows from the fan to the ice
compartment. 6 (Id.).
6

The Court notes that the patentee’s conclusion that the fan is not in or part of the ice compartment is somewhat
dubious given that the description of Tenmyo states that the fan 31 is “provided in the back of the icemaker
13

While Whirlpool is correct that the patentee states that the air passing to the damper 16
“is not passed through Tenmyo’s ice-maker compartment 12[,]” (id. at 42), the Court concludes
that the language of the claims itself effectively distinguishes Tenmyo as conceptualized by the
patentee.
While the language Whirlpool proposes to add seems innocuous because its meaning is
imparted by the claim language itself, the Court declines to add this additional language to the
claim. At this stage of the proceeding the Court has little knowledge of the allegedly infringing
refrigerator and, as such, does not know what creative meanings the parties will assign to this
additional language. If LG is attempting to apply its claims to an arrangement that does not pass
the air from the icemaker, Whirlpool may prevail on noninfringement at summary judgment. 7
However, the plain language of the claims is enough to allow Whirlpool to assert this defense. 8
Consequently, the Court finds that no construction of either term is necessary.
4.

ice transportation mechanism located within the ice compartment configured to
promote movement of ice stored within the ice compartment through an outlet
defined in the ice compartment.
‘382 patent, claim 1

LG’s Construction
a mechanism that is separate from the ice
maker and is capable of moving ice stored in
the ice compartment through an outlet of the
ice compartment (e.g., screw wires capable of
moving ice by means of their rotation.)

Whirlpool’s Construction
Indefinite as § 112 ¶ 6 with no
corresponding structure.
Alternatively, construed under § 112 ¶ 6 to
mean “rotating screw wires horizontallydisposed in an ice storage area of the ice
compartment”

compartment (12)” and that the fan is named the “ice-maker fan.” However, for the purposes of disclaimer, the
patentee’s distinction of the prior art must be taken at his word. Whether the patentee was incorrect, and the fan is
in the ice-maker compartment (thus making the air flow from the ice-maker compartment, not a portion separate
from the compartment), is an inquiry relevant to anticipation and obviousness, not of claim construction.
7
Further, to the extent that Whirlpool merely practices the arrangement set forth in Tenmyo, it may have a strong
invalidity defenses.
8
The Court also declines to construe this term under § 112 ¶ 6, because the word “damper” provides a well-known
structure and that structure is narrowed by the functional language. See MIT, 462 F.3d 1344, 1355-56 (finding that
“aesthetic correction circuit” was not a means-plus function term because “circuit” provided structure, and its
purpose further defined that structure).
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(JCC at 19).
5.

ice transportation mechanism is configured to, when the first door is in the
closed position and the ice discharge duct is opened, transport ice stored within
the ice compartment to the dispenser through the first and second portions of
the ice discharge duct.
‘382 patent, claim 9

LG’s Construction
No construction necessary.

Whirlpool’s Construction
Indefinite as § 112 ¶ 6 with no
corresponding structure.

Alternatively, “the ice transporting
mechanism moves ice from the ice
compartment to the dispenser through the ice
discharge duct when the first door is closed
and the ice discharge duct is open.”
(JCC at 23).

Alternatively, construed under § 112 ¶ 6 to
mean “rotating screw wires horizontallydisposed in an ice storage area of the ice
compartment”

The difference between the two constructions is that Whirlpool suggests that the term
should be construed as a means-plus-function term, despite the fact that it does not include the
words “means for.” Whirlpool proposes that this is appropriate because the claim term is purely
functional and there is no class of structures in the art known as an ice transportation mechanism.
(Whirl. Op. Br. at 9-10). Whirlpool also points out that the Federal Circuit has held repeatedly
that “mechanism” recites no structure at all and asserts that “ice transportation” adds no structure
to the term. (Whirl. Resp. Br. at 13 (citing Welker Bearing Co. v. PhD, Inc., 550 F.3d 1090,
1096-97 (Fed. Cir. 2008)). Thus, Whirlpool concludes that the term should be construed as a
means-plus-function term and, as such, limited to the structure set forth in the specification –
horizontal screw wires. See 35 U.S.C. § 112 ¶ 6 (means-plus-function construed as structure in
the specification and equivalents); Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d
1354, 1358 (Fed. Cir. 2004) (same).

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LG argues that this term would be understood by a person in the art as denoting a specific
range of structures because it describes the structural relationship between the ice transporting
mechanism, the ice compartment, and the outlet defined in the ice compartment. (LG Op. Br. at
14). The Court agrees with Whirlpool and construes the term as a means-plus-function term.
Where the words “means for” do not appear in the claim term, there is a strong
presumption that the claim term should not be construed as a means-plus-function term.
Massachusetts Institute of Technology and Electronics For Imaging, Inc. v. Abacus Software
(MIT), 462 F.3d 1344, 1355-56 (Fed. Cir. 2006). The Federal Circuit has stated that “we have
seldom held that a limitation not using the term ‘means’ must be considered to be in means-plusfunction form” and that “the circumstances must be [unusual] to overcome the presumption.” Id.
(alterations in original). To avoid being construed as means-plus-function, the term need not
“denote a specific structure” but may avoid such construction “even if the term identifies the
structures by their function.” Id. Indeed, many common “devices take their names from the
functions they perform” including devices such as screwdrivers and clamps. Greenberg v.
Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1582 (Fed. Cir. 1996).
However, the presumption that a term without “means for” should not be construed as a
means-plus-function term can be rebutted “by showing that the claim element recite[s] a function
without reciting sufficient structure for performing that function” and does not enable one of
ordinary skill to identify a class of appropriate structures. DePuy Spine, Inv. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005 (Fed. Cir. 2006); see also MIT, 462 F.3d at 1356; CCS
Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002).
Whirlpool is correct that the word “mechanism” is a “nonce” word that does not provide
any structure to a claim limitation. Welker Bearing Co. v. PhD, Inc., 550 F.3d 1090, 1096-97

16

(Fed. Cir. 2008); MIT, 462 F.3d at 1354. Essentially, “mechanism” sounds like structure but
does not tell the person of skill in the art anything other than the item is intended to accomplish a
function, which is exactly what the term “means” would accomplish in its place. See MIT, 462
F.3d at 1354. However, the fact that the patentee used the word “mechanism” does not end the
inquiry.
Where the term at issue uses substantial functional language or a “nonce” words such as
the term “mechanism,” the surrounding language and its usage in the art is an important
consideration in determining whether the presumption has been overcome. See DePuy Spine,
Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1023 (Fed. Cir. 2006) (finding that claim
limitations requiring a “compression member” to fit into a cylindrical opening and to exert force
on a screw head weighed against means-plus-function construction). For example, in MIT, the
Federal Circuit confronted two terms – “colorant selection mechanism” and “aesthetic correction
circuitry.” The court found that “colorant selection mechanism” was a mean-plus-function term
because “mechanism” did not provide structure and the language modifying it “colorant
selection” merely provided a purpose but no structure. 462 F.3d 1344, 1355-56 The court based
this conclusion on the fact that no dictionary definition denoted that the term was used as a name
for a structure in the art and that the record was devoid of “any suggestion that it had a generally
understood” meaning in the art as a structure. Id.

However, the court found that “aesthetic

correction circuitry” denoted sufficient structure because, the word “circuit” denoted structure
and the words “aesthetic correction” provided additional information on the type of circuit that
was contemplated. Id. at 1355. Thus, where structure appears in the term, functional language
modifying it can prevent § 112 ¶ 6 treatment; however, where a “nonce” word appears, words
designating purpose that do not themselves designate a structure do not save the limitation.

17

However, where the words surrounding “mechanism” themselves constitute a well
known set of structures in the art, the claim should not be construed as means-plus-function. In
Greenberg v. Ethicon Endo-Surgery, Inc., the Federal Circuit found that “detent mechanism”
was not a means-plus-function claim because the word “detent” itself was a noun that was well
known as a structure both in the art and in dictionaries. 91 F.3d 1580, 1582-84 (Fed. Cir. 1996).
The fact that the dictionaries defined “detent” in terms of its function was irrelevant because,
despite its functional meaning, it denoted a well-known structure in the art. Id. at 1583; see also
Cole v. Kimberly-Clark Corp, 102 F.3d 524, 530-532 (Fed. Cir. 1996) (“perforation means”
denoted structure because perforation itself is a well-known structure and the word “means” was
not intended to invoke means-plus-function claiming); Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (“connector assembly” not means-plusfunction because “connector” has a well understood structure, as evidenced by numerous
dictionary definitions). Similarly, in DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., the
court found that because “compression member” had several dictionary definitions that
supported that it was a well known structure and because both experts agreed that it denoted a
kind of structure in the art, the term was not a means-plus-function limitation. 469 F.3d 1005,
1023 (Fed. Cir. 2006).
There is nothing in the claim here that provides structure to one of skill in the art. In this
case, the term “ice transportation mechanism” uses a “nonce” term and the surrounding language
does very little to provide structure. Like “colorant selection mechanism” in MIT, there is no
suggestion in the record, based on a dictionary definition or the experts, that this term has
denotes a well known set of structures in the art. While it would not matter if the set of
structures was broad, so long as one of skill would know that it designated certain structure,

18

Lighting World, 382 F.3d at 1359-60, here there is no suggestion before the Court that the
purpose designates any understood structure at all. Further, “ice transportation” does not add
structure to the nonce word “mechanism.” In sum, there is no structure in either “mechanism” or
“ice transportation mechanism” that the purpose could add specificity to. See MIT, 462 F.3d at
1355-56 (construing “colorant selection mechanism” as a means-plus function claim, but
construing “aesthetic correction circuitry” in line with its plain meaning because “circuit”
provided a base of structure upon which “aesthetic selection” elaborated). Finally, the words
surrounding the claim do not add to the information about the term – they only give the origin
and destination of the ice transported, without clues about the structure that transports the ice
there.
Thus, the Court concludes that the term is a means-plus-function term and construes it as
limited to those structures disclosed in the specification. However, LG is correct that
Whirlpool’s proposed construction reads a limitation into the claims that is not even required by
the specification – that the screw wires be horizontal. Indeed, while the Figure shows that the
wires are horizontal, the specification does not so require:
The ice storage 26 temporarily stores the ice delivered from the icemaker 24,
and the ice stored in the ice storage 26 is transported by a mechanism for
delivering the ice (e.g. screw wires capable of moving the ice by means of their
rotation.)
(‘382 patent, 6:28-33). As such, the Court construes “ice transportation mechanism” as “screw
wires capable of moving ice by means of their rotation and equivalent structures.”

19

6.

wherein the ice discharge duct is selectively opened and closed such that ice can
be transferred to the dispenser positioned on the first door
Claims 1, 18 of the ‘382 patent

LG’s Construction
No construction necessary.

Whirlpool’s Construction
Indefinite as a § 112 ¶ 6 term without
corresponding structure.

Alternatively, “the ice discharge duct is
opened and closed in response to a selection
to allow ice to be moved from the ice
compartment to the dispenser.”
(JCC at 21).
7.

the ice discharge duct is selectively opened and closed independent of the
movement of the first door
Claims 4, 19 of the ‘382 patent

LG’s Construction
No construction necessary.

Whirlpool’s Construction
Indefinite.

Alternatively, “the opening and closing of the Indefinite as a § 112 ¶ 6 term without
ice discharge duct does not require
corresponding structure
movement of the door.”
(JCC at 21).
At the Markman hearing Whirlpool acquiesced to deferring an indefiniteness
determination until dispositive motions; however, Whirlpool proposed that the Court read the
term in light of what it asserts is a prosecution history disclaimer that the closed duct must be airtight. The Court concludes that the prosecution history is not sufficiently clear to constitute a
disclaimer. See Linear Tech, 566 F.3d at 1057-59 (prosecution history must provide a clear
disavowal of claim scope to limit the plain meaning of the claims).
Claim 4, which incorporates independent claim 1, contains both these limitations and is
representative of claims 18, and 19 (which depend from claim 14). The terms at issue appear
during the discussion of the ice discharge duct after the claim sets forth the location of the

20

freezer on the bottom, the refrigerator at the top, the ice compartment within the refrigerator, and
the two French doors on the refrigerator. The patent goes on to claim:
a dispenser positioned on the first door corresponding to the ice compartment;
an ice discharge duct that, when the first door corresponding to the ice
compartment is in the closed position, extends at least partially between the ice
compartment and the dispenser and defines a passage to discharge ice
transported from the ice compartment, the ice discharge duct including:
a first portion being defined as a cavity that penetrates the first door, and
a second portion that is configured to be separated from the first portion
when the first door is in an opened position and being configured to interface
with the first portion when the first door is in a closed position;
wherein the ice discharge duct is selectively opened and closed such that the
ice can be transferred to the dispenser positioned on the first door;
wherein the ice discharge duct is selectively opened and closed independent of
the movement of the first door.
(‘382 patent, 11:45-12:25) (emphasis added). Essentially, this maps forth an ice discharge duct
that is split into two portions; one part stays on the door when it opens, the other part remains on
the body of the refrigerator, but when the door is closed, they line up and create a united duct
where ice can pass from one to the other and then into the dispenser.
In the reexamination of the patent, the patentee does not, as Whirlpool suggests,
distinguish Fisher based upon the fact that Fisher’s duct is not air-tight. Rather, in context, LG
argues that there is a third chute in the Fisher reference that is opened and closed, and as a result,
neither portion of Fisher’s ice discharge duct is opened or closed – it is the third chute above that
is opened and closed. (Jan. 31, 2011 Reply to Nov. 30, 2010 Action at 23-24; Durnham Cert.
Ex. X; D.E. 86-6). The patentee made the statement about “air (or other content)” to
demonstrate that both ducts remained open even when the flapper was closed and it was only the

21

third duct that Fisher’s flapper closed, not to suggest that Fisher differed from the patent only in
its lack of an air-tight flapper. (Id. at 25).
Specifically, the patentee distinguished Fisher as follows:
Independent claim 1 recites, among other things, an ice discharge duct that
includes a first portion being defined as a cavity that penetrates the first door
and a second portion that is configured to be separated from the first portion
when the door is in an opened position and being configured to interface with
the first portion when the first door is in a closed position, where the ice
discharge duct is selectively opened and closed such that ice can be transferred
to the dispenser positioned on the first door. . . .
[T]he Reexamination Request contends that Fisher’s flapper door 114
selectively opens and closes Fisher’s ice discharge duct, as required by claim
1. Patentee disagrees.
Fisher’s flapper door 114 does not open and close the aspects of Fisher that are
mapped (by the Request itself) to the claimed ice discharge duct, as Fisher’s
flapper door 114 fails to open or close either of Fisher’s separate chute 112
(mapped by the Request to the second portion of the claimed discharge duct) or
Fisher’s inner door chute 128 (mapped by the Request to the first portion of the
claimed discharge duct). Rather, the only chute that is opened and closed by
Fisher’s flapper door 114 is chute 72, which does not correspond to opening or
closing of either of the chutes (112, 128) that are mapped by the
Reexamination Request to the claimed ice discharge duct.
(Id. at 23-24) (citations omitted, emphasis added). This statement distinguishes Fisher not based
upon Fisher’s lack of an air-tight closure, but based upon the fact that its flapper closes a third
chute that is not present in the claimed invention. As such, there is no clear disavowal of claim
scope that the closure must be air-tight.
Whirlpool also argues that LG clearly distinguished the prior art by pointing out that the
prior art’s opening and closing member controlled the flow of ice “out of the dispenser” and not
“to the dispenser” as exists in the patent. (Whirl. Op. Br. at 26).

While LG did so distinguish,

it did not limit the scope of the claims. Again, the claim terms themselves contain this limitation.
The claim term states:

22

wherein the ice discharge duct is selectively opened and closed such that the
ice can be transferred to the dispenser positioned on the first door.
(‘382 patent, 12:10-15) (emphasis added). Thus, the claim term itself contains this language, and
it properly distinguishes the scope of the claims from the prior art. Any additional limitation is
superfluous and would be unwise to adopt at this stage of the litigation.
Consequently, the Court finds that the patentee committed no clear disavowal of claim
scope and construes the term in line with its plain meaning. See Linear Tech, 566 F.3d at 105759 (prosecution history must provide a clear disavowal of claim scope to limit the plain meaning
of the claims).

8.

a dispenser tube configured to guide liquid water to the dispenser 9
‘820 patent, claims 1, 11, 13

LG’s Construction
No construction

Whirlpool’s Construction
a tube that extends from the outlet of a
water tank to an inlet of a dispenser

Alternatively, “a dispenser tube that guides
liquid water to the dispenser”
(JCC at 27).
9.

dispenser tube being different than the ice maker tube
‘820 patent, claims 1, 11, 13

LG’s Construction
No construction
Alternatively, “the dispenser tube is different
than the ice maker tube”
(JCC at 27).

9

Whirlpool’s Construction
the tube that extends from the outlet of a
water tank to an inlet of a dispenser is
separate from the tube that extends from a
water source to the inlet of the icemaker

Whirlpool abandoned its indefiniteness arguments for these terms.
23

The major differences between these constructions are (1) that Whirlpool’s constructions
require that the dispenser tube extend from a “water tank” and (2) that Whirlpool’s constructions
use the term “separate” instead of “different,” which is present in the claims.
Whirlpool seems to be concerned that LG will argue at trial that the tubes different in
color or path, and so wants to limit it to separate tubes, and suggests that the only “different”
tubes supported by the specification are those that do not branch. The specification describes
branching tubes as “stem[ing]” from one another. (‘820 patent, 8:14-17). Whirlpool further
argues that the dispenser tube must extend from the water tank to the dispenser because the
Summary and preferred embodiments consistently describe the “dispenser tube” as “delivering
water from the water tank to the dispenser.” (Whirl. Op. Br. at 29) (citing ‘820 patent, 8:58-60,
Fig. 7; ‘820 patent, 4:60-61, 8:20-22). Whirlpool also points to the prosecution history where, in
an amendment, the applicant cancelled all claims relating to the “branched” configuration and
filed these in a divisional that became the ‘475 patent. (Whirl. Op. at 28).
Despite Whirlpool’s arguments, the Court concludes that the term does not require
construction because: (1) the prosecution history is not sufficiently clear to limit the claim term
and (2) the specification’s limitations on the dispenser tube describe only a preferred
embodiment and not the invention as a whole.
The Court is not persuaded by Whirlpool’s prosecution history argument. Whirlpool
reads too much into this conduct without explicit evidence of motive. LG could have deleted the
“branched” configuration and filed it in a separate patent because LG wanted a genus patent and
a species patent. This is supported by the fact that the preferred embodiments depict branching.
(‘820 patent, Fig. 6, 8:14-17). While Whirlpool’s interpretation of the prosecution history may
be correct, it falls far short of the clarity required to change the meaning. This is exactly the kind

24

of unclear negotiation that lacks the clarity to define the term. Phillips, 415 F.3d at 1317
(prosecution history often unclear because it is a negotiation between the patentee and the
examiner).
Whirlpool’s citations of the specification also do not persuade the Court because they
seek to import limitations from the specification into the claims. Whirlpool seeks to require the
tubes to come from the “water tank” and not merely a “water source,” but the claims do not
include a limitation of a “water tank.” (‘820 patent, 11:45-12:5, 12:40-13:4, 13:6-27). It is the
language of the claims where the Court’s focus must remain. Interactive Gift Express, Inc. 256
F.3d at 1331. As such, the fact that the specification describes the tube as emanating from a
water tank is immaterial.
At the Markman hearing, Whirlpool relied extensively on the fact that the description in
the specification of the dispenser tube used the words “the present invention,” which the caselaw
suggests make it more likely that the claim will be limited to that meaning. See Honeywell Int’l,
Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006); Telecordia Tech., Inc., v. Cisco
Sys., Inc., 612 F.3d 1365, 1374 (Fed. Cir. 2010). The Court recognizes the force of that caselaw,
but finds that it is inapplicable here because two elements of the specification make clear that,
despite its use of the language “the present invention,” the specification is referring to a preferred
embodiment.
First, the section of the patent that Whirlpool cites is titled “Best Mode for Carrying Out
the Invention” and introduces itself by stating that “hereinafter, preferred embodiments of a
refrigerator according to the present invention will be described in detail with reference to the
accompanying drawings.” (‘820 patent, 5:32-40). As such, even if the subsequent language uses

25

the terms “the present invention,” the language must be read as describing a preferred
embodiment.
Second, even the language that uses the term “the present invention,” makes clear that it
is describing that invention only with reference to a particular preferred embodiment in Figure 6.
The language states:
Next, the structure for supplying water to the dispenser and the icemaker,
according to the present invention will be described with reference to Fig. 6.
(‘820 patent, 8:3-5) (emphasis added). As such, the patentee was not describing the entire
invention, but a particular embodiment. To import the requirement that “[t]he water tank 56 is
connected to the dispenser 29 through the dispenser tube 58 to supply the water to the dispenser
29” would improperly import limitations from the specification into the claims. See Phillips v.
AWH Corp., 415 F.3d 1303, 1320, 1323 (Fed. Cir. 2005) (it is improper to import the limitations
of the specification into the claims).
The Court is also unconvinced that branching lines could not be “different.” The portion
of the specification cited by Whirlpool is completely unprobative on the issue. (See ‘820 patent,
8:10-17). Further, while Whirlpool is correct that “different” could mean a difference in color,
the concern that “separate” would read out branching tubes is a greater evil. Indeed, the context
of the claim term reduces that possible error: the claim term states that “the dispenser tube being
different than the ice maker tube.” This context makes clear that they are two different “tubes,”
not the same tube, with two different colors. 10 Consequently, the Court finds that the term does
not require construction and should be construed in line with its plain meaning.

10

The Court does not understand how two tubes could be the same tube and be two different colors. As such,
Whirlpool’s argument does not logically support its position.
26

III.

Conclusion
For the foregoing reasons, the Court construes
(1) “proximate to” to mean “very near”;
(2) determines that “a damper configured to regulate air flow, from the ice compartment to
the refrigerating compartment, through an opening in the wall of the ice compartment”
does not require construction;
(3) determines that “damper is configured to enable regulation of a temperature associated
with the refrigerating compartment, through the opening in the wall of the ice
compartment” does not require construction;
(4) construes “ice transportation mechanism located within the ice compartment configured
to promote the movement of ice stored within the ice compartment through an outlet
defined in the ice compartment” to mean “rotating screw wires (or an equivalent
structure) that move the ice stored in the ice compartment through an outlet of the ice
compartment”;
(5) construes “ice transportation mechanism is configured to, when the first door is in the
closed position and the ice discharge duct is opened, transport ice stored within the ice
compartment to the dispenser through the first and second portions of the ice discharge
duct” to mean “rotating screw wires (or an equivalent structure) that, when the first door
is in the closed position and the ice discharge duct is opened, transport the ice stored
within the ice compartment to the dispenser through the first and second portions of the
ice discharge duct”;

27

(6) determines that “wherein the ice discharge duct is selectively opened and closed such that
ice can be transferred to the dispenser positioned on the first door” does not require
construction;
(7) determines that “the ice discharge duct is selectively opened and closed independent of
the movement of the first door” does not require construction;
(8) determines that “dispenser tube configured to guide liquid water to the dispenser” does
not require construction; and
(9) determines that “dispenser tube being different than the ice maker tube” does not require
construction.
Dated: April 25, 2011

/s/ Garrett E. Brown
GARRETT E. BROWN, JR., U.S.D.J.

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