Speedfit LLC et al v. Woodway USA, Inc. et al

Filing 189

MEMORANDUM AND OPINION. As discussed in the attached memorandum and order, upon consideration of the parties respective arguments, as well as the intrinsic record, expert testimony, and controlling precedent, the court finds that Claim 1 of the 016 Patent must be construed as limited to the structures specifically described in the specification, i.e., those disclosed in Figures 2, 3, and 4, and their equivalents. Ordered by Judge Kiyo A. Matsumoto on 11/20/2017. (Flores, Diego)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
---------------------------------X
SPEEDFIT LLC and AUREL A.
ASTILEAN,
MEMORANDUM AND ORDER

Plaintiffs,
-against-

13-cv-1276 (KAM)(AKT)

WOODWAY USA, INC.,
Defendant.
---------------------------------X
MATSUMOTO, United States District Judge:
Plaintiffs Speedfit LLC (“Speedfit”) and Aurel A.
Astilean (“Astilean”) (collectively, “plaintiffs”) commenced the
instant action against Woodway USA, Inc. (“Woodway” or
“defendant”), alleging that Woodway wrongfully infringed upon
United States Patent No. 8,308,619 (“the ‘619 Patent”) and
United States Patent No. 8,343,016 (“the ‘016 Patent”), both of
which are owned by Speedfit and relate to a manually-powered
treadmill involving a closed-loop treadmill belt designed to
maintain a curved running surface.

Presently before the court

are the parties’ submissions for claim construction of a single
disputed term, “means for slackening,” recited in Claim 1 of the
‘016 Patent. 1
In their initial claim construction memorandum, plaintiffs sought
construction of four disputed claim terms recited in Claims 1 and 12 of the
‘016 Patent, and Claim 1 of the ‘619 Patent. (See ECF No. 178, Plaintiffs’
Initial Claims Construction Brief (“Pl. Mem.”) at 1.) During the claim
construction, or Markman, hearing, held before this court on August 15, 2017,
the parties confirmed that ordinary meaning would govern for all claims
previously in dispute, with the exception of “means for slackening” as it is
1

BACKGROUND 2
Plaintiff Speedfit, founded by plaintiff Astilean and
co-inventor Dan Bostan, who is not joined in this action, is a
New York-based company that develops fitness programs and
equipment.

(ECF No. 150, Supplemental Complaint, dated

2/10/2017 (“Supp. Compl.”) at ¶¶ 8-9.)

Defendant Woodway is a

Wisconsin-based corporation that designs, manufactures, and
sells fitness and exercise products, including manually-operated
treadmills with a curved running surface.

(Id. at ¶ 10.)

The

patents at issue relate to a manually-powered treadmill design
involving a closed-loop treadmill belt designed to maintain a
curved running surface.
The ‘619 Patent, which derives its priority from
United States Provisional Application Serial No. 61/280,265
(“the ‘265 Application”), was filed on October 29, 2010 and
issued on November 13, 2012, with a single, independent claim.
(Pl. Mem. at 1; Ex. B, ‘619 Patent.)

The ‘016 Patent was filed

November 1, 2010 and issued on January 1, 2013, with seventeen

recited in Claim 1 of the ‘016 Patent. (See ECF No. 188, Transcript of
August 15, 2017 Markman hearing (“Tr.”) at 5:4-15, 98:4-12.) Accordingly,
the court will only construe the term “means for slackening” as it is recited
in Claim 1 of the ‘016 Patent.
2 The factual and procedural history of this action has been discussed
comprehensively in the court’s prior orders concerning this litigation (see
ECF No. 59, Order denying motion to dismiss and to transfer; ECF No. 124,
Order granting motion to file a third amended complaint; ECF No. 143, Order
granting in part and denying in part motion to dismiss the third amended
complaint), and is, therefore, only set forth in this Memorandum and Order to
the extent relevant to claim construction.

2

claims, of which Claim 1 is the sole independent claim.
1; Ex. A, ‘016 Patent.)

(Id. at

The ‘016 Patent also derives its

priority from the ‘265 Application.

(Id.)

Plaintiffs allege that Astilean brought his nonmotorized treadmill invention to Woodway’s attention in early
December of 2008, after filing a provisional patent application
(“the ‘239 Application”), 3 and arranged with the President of
Woodway, Doug Bayerlein, that Woodway’s engineer, Nicholas
Oblamski, would build a production model for use at an upcoming
tradeshow.

(Pl. Mem. at 4-5.)

Plaintiffs allege that Woodway

subsequently misappropriated their unique concept, design, and
patent rights, by filing a provisional patent application in its
name only.

(Id. at 5.)

In particular, plaintiffs allege that

Woodway filed the provisional patent application “in attempt to
secure patent rights to a leg-powered treadmill with a curved
running surface that relies upon a means for slackening . . . .
to keep the upper part of the treadmill belt from floating up
off the rails and losing the slightly concave shape.”

(Id.)

Plaintiffs claim that the “means for slackening” at issue was
their unique conception.

(Id.)

Plaintiffs commenced the instant action on March 11,
2013, seeking, inter alia, a declaratory judgment invalidating
3 The ‘239 Application was initially filed on November 7, 2008, and was
subsequently refiled on November 1, 2009, as the ‘265 Application. (Pl. Mem.
at 3.)

3

Woodway’s patent application or, alternatively, adding Astilean
as an inventor on the pending application.
Complaint, dated 3/11/2013.)

(ECF No. 1,

The parties have already engaged

in substantial motion practice, resulting in the filing of
multiple amended complaints, including most recently, a
supplemental complaint dated February 10, 2017. 4
Supp. Compl.)

(See generally

The parties submitted a joint disputed claim

terms chart on April 19, 2017, in which plaintiffs proposed
constructions for multiple claim terms recited in the ‘016 and
‘619 Patents, and defendant contended, in response, that no
construction was necessary, and that ordinary meaning should
govern for all terms except for “means for slackening.”

(See

ECF No. 158, Joint Disputed Claim Terms Chart.)
Plaintiffs filed their instant motion for claim
construction pursuant to court order, in which they limited the
construction sought to four claim terms, including the “means
for slackening” claim term presently at issue.

(Pl. Mem. at 13-

In its most recent motion to dismiss, which was granted by Memorandum and
Order dated December 28, 2016, defendant argued that plaintiffs lacked
standing to bring the instant infringement claim, due to their failure to
join Dan Bostan, a co-inventor, as a plaintiff at the time that the complaint
was filed. (See ECF No. 143, Order granting Motion to Dismiss.) During a
telephonic status conference held before this court on January 19, 2017,
plaintiffs proposed filing a fourth amended complaint alleging infringement
claims on behalf of Speedfit as of June 1, 2015, the date of assignment of
Bostan and Astilean’s ownership interest in the patents at issue to Speedfit,
thereby conferring standing as of that date. (See ECF Minute entry dated
1/19/2017.) Defendant expressed a preference that plaintiffs file a
supplemental complaint to avoid relation back issues, to which plaintiffs
consented, and plaintiffs subsequently filed a supplemental complaint on
February 10, 2017. (See id.; Supp. Compl.)
4

4

14.)

A claim construction, or Markman, hearing was held before

this court on August 15, 2017, at which the parties presented
oral arguments and expert testimony to further explain their
respective constructions of the claim term in dispute.
generally Tr.)

(See

As discussed above, the parties represented that

they reached a resolution on all disputed claim terms, with the
exception of “means for slackening” as it is recited in Claim 1
of the ‘016 Patent.

(Id. at 5:4-15, 98:4-12; see also ECF No.

177, Memorandum in Opposition (“Def. Opp.”) at 12-13.)
LEGAL STANDARDS
I.

Claim Construction
Before reaching a determination regarding an alleged

infringement, the court must first construe a patent’s claim
limitations to define the meaning and scope of the invention
from which a patentee has a right to exclude others.

See

Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115 (Fed. Cir. 2004) (noting that “determining
infringement is a two-step process” whereby the court must first
construe a patent’s claim limitations to define the meaning and
scope of the invention, and second, compare the accused device
to the construed claims).

To effectively protect an inventor’s

rights, patents must describe the exact scope of an invention.
See Markman v. Westview Instruments, Inc., 517 U.S. 370, 373
(1996) (“[A] patent must describe the exact scope of an
5

invention and its manufacture to secure to [the patentee] all to
which he is entitled, [and] to apprise the public of what is
still open to them.” (internal citation and quotation marks
omitted) (alterations in original)).

Through the patent claims,

a patentee seeks to define the precise scope of the invention
and thus, the scope of the patentee’s right to exclude others
from making, using, or selling the patented invention.

Id.

Construction of a patent, including the terms within
its claims, must be determined by the court.

See Teva Pharm.

USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835 (2015) (“‘[T]he
construction of a patent, including terms of art within its
claim,’ is not for a jury but ‘exclusively’ for ‘the court to
determine.’” (quoting Markman, 517 U.S. at 390)).

The law of

the Federal Circuit governs issues of substantive patent law,
which includes claim construction.

See Spiel Assoc., Inc. v.

Gateway Bookbinding Sys., Ltd., No. 03-CV-4696, 2007 WL 6148516,
at *3 (E.D.N.Y. June 21, 2007) (“The construction of patent
terms is a question of law to be determined by the Court,
applying the law of the Federal Circuit to issues of substantive
patent law.” (citations omitted)), adopted by 2008 WL 5750018
(E.D.N.Y. Feb. 28, 2008).

In addition to its protective

function with respect to the patentee, claim construction is
significant in providing proper notice to the public as to what
inventions are and are not covered by a given patent.
6

See

Markman, 517 U.S. at 373; see also Pitney Bowes, Inc. v.
Hewlett–Packard Co., 182 F.3d 1298, 1311 (Fed. Cir. 1999)
(referring to the “public notice function” of patent claims).
In deciding matters of claim construction, district
courts have “wide latitude” regarding the procedure by which to
reach a final determination.

Ballard Med. Prods. v. Allegiance

Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir. 2001) (“As long
as the trial court construes the claims to the extent necessary
to determine whether the accused device infringes, the court may
approach the task in any way that it deems best.”).

In

addition, the court need only construe claims that are “in
controversy, and only to the extent necessary to resolve the
controversy.”

Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200

F.3d 795, 803 (Fed. Cir. 1999) (citing U.S. Surgical Corp. v.
Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)); see also
Ballard, 268 F.3d at 1358 (“If the district court considers one
issue to be dispositive, the court may cut to the heart of the
matter and need not exhaustively discuss all the other issues
presented by the parties.”).

Further, the court is not required

to construe every limitation present in a patent’s asserted
claims, but rather, the focus is on resolution of disputed
meanings and scope for use in determination of infringement.

O2

Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1362 (Fed. Cir. 2008).
7

II.

Sources for Construing Claims
Courts must construe patent claims objectively, Vivid

Techs., 200 F.3d at 803, by seeking to accord a claim the
meaning it would have to a “person of ordinary skill in the art
at the time of the invention.”
1116.

Innova/Pure Water, 381 F.3d at

In construing claims, courts consider three primary

sources within the intrinsic evidence of record: (i) the
language of the claims, (ii) the specification, and (iii) the
prosecution history.

Secure Web Conference Corp. v. Microsoft

Corp., No. 13-CV-2642, 2014 WL 4954644, at *1 (E.D.N.Y. Oct. 2,
2014) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996) and Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff’d, 517 U.S. 370
(1996)), aff’d 640 F. App’x 910 (Fed. Cir. 2016).
A.

Claim Language
The court first looks to the “words of the claims

themselves, both asserted and nonasserted, to define the scope
of the patented invention.”

HowLink Global LLC v. Network

Commc’ns Int’l. Corp., 561 F. App’x 898, 905 (Fed. Cir. 2014)
(quoting Vitronics, 90 F.3d at 1582).

In making such a

determination, the words of the claim are the “controlling
focus.”

Secure Web, 2014 WL 4954644, at * 2 (citing Digital

Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed.
Cir. 1998)).

In general, a claim’s language is given its
8

ordinary and customary meaning unless a distinct definition is
employed in the specification or prosecution history.

See

Digital Biometrics, 149 F.3d at 1344 (citing York Prods., Inc.
v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed.
Cir. 1996) (“Without an express intent to impart a novel meaning
to claim terms, an inventor’s claim terms take on their ordinary
meaning.”)).

As discussed above, the ordinary and customary

meaning of a claim term is that which one of “ordinary skill in
the art at the time of the invention” would understand.
Innova/Pure Water, 381 F.3d at 1116; see also InTouch Techs,
Inc. v. VGO Commc’ns Inc., 751 F.3d 1327, 1339 (Fed. Cir. 2014)
(“Generally, a claim term is given the ordinary and customary
meaning as understood by a person of ordinary skill in the art
at the time of invention.” (citing Phillips v. AWH Corp., 415
F.3d 1303, 1312-13 (Fed. Cir. 2005))); Interactive Gift Exp.,
Inc. v. Compuserve Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001)
(“Throughout the construction process, it is important to bear
in mind that the viewing glass through which the claims are
construed is that of a person skilled in the art.” (citations
omitted)).
B.

Specification
Next, the court looks to the patent’s specification,

as “[c]laims must be read in view of the specification, of which
they are a part.”

Markman, 52 F.3d at 979 (citations omitted).
9

The specification may assist in the court’s determination of
whether the inventor intentionally used any terms in the claims
in a manner inconsistent with their ordinary meaning; however,
this intention must be clear.

See Vitronics, 90 F.3d at 1582

(“[A] patentee may choose to be his own lexicographer and use
terms in a manner other than their ordinary meaning, as long as
the special definition of the term is clearly stated in the
patent specification or file history.” (citations omitted)).
If a patentee selects a meaning distinct from that
which the claim terms would otherwise have to a person of
ordinary skill in the art, the different meaning must be set out
in the specification in a manner sufficient to give one of
ordinary skill notice of the change from the usual meaning.
id.; see also Innova/Pure Water, 381 F.3d at 1117.

See

Moreover,

“because the inquiry into the meaning of claim terms is an
objective one, a patentee who notifies the public that claim
terms are to be limited beyond their ordinary meaning . . . will
be bound by that notification, even where it may have been
unintended.”
omitted).

Innova/Pure Water, 381 F.3d at 1117 (citations

It is improper, however, for courts to read

limitations, not clearly set forth in the specification, into a
claim.

See Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d

1312, 1321 (Fed. Cir. 2016) (citing Phillips, 415 F.3d at 1323);

10

see also Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 1368
(Fed. Cir. 2005) (citing Phillips, 415 F.3d at 1312).
C.

Prosecution History
Third, the court may consider the prosecution history

of the patent, if it is in evidence.

A patent’s prosecution

history contains a complete record of all proceedings before the
United States Patent and Trademark Office (“USPTO”), including
any express representations made by the applicant regarding the
scope of the claims.

See Phillips, 415 F.3d at 1317.

As such,

the prosecution history provides evidence of how the USPTO and
the inventor understood the patent, and the record before the
USPTO can be of critical significance in determining the meaning
of the claims.

See id. (“Like the specification, the

prosecution history provides evidence of how the PTO and the
inventor understood the patent.” (citation omitted)); see also
Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576
(Fed. Cir. 1995) (“The prosecution history limits the
interpretation of claim terms so as to exclude any
interpretation that was disclaimed during prosecution.

Claims

may not be construed one way in order to obtain their allowance
and in a different way against accused infringers.” (citations
omitted)).

11

D.

Extrinsic Evidence
Finally, although it is well-settled that courts

should look primarily to the intrinsic evidence of record in
resolving a claim construction dispute, extrinsic evidence may
be considered when ambiguity remains even after consulting the
intrinsic evidence.

See Vitronics, 90 F.3d at 1583 (noting that

it is improper to rely on extrinsic evidence where “analysis of
the intrinsic evidence alone will resolve any ambiguity in a
disputed claim term”).

Extrinsic evidence is “less significant

than the intrinsic record in determining the legally operative
meaning of claim language.”

Secure Web, 2014 WL 4954644, at *2

(quoting Phillips, 415 F.3d at 1317).

Indeed, in permitting

consideration of extrinsic evidence, the Federal Circuit has
cautioned courts not to place too much reliance on extrinsic
evidence and too little reliance on intrinsic sources.
(citing Phillips, 415 F.3d at 1320).

Id.

Extrinsic evidence may

include evidence external to the patent and prosecution history,
such as expert testimony, inventor testimony, dictionaries, and
relevant treatises.

See id. (citing Phillips, 415 F.3d at 1317

and Markman, 52 F.3d at 980).
III. “Means-Plus-Function” Claim Limitations
Patent claims employing a “means-plus-function”
limitation are governed by 35 U.S.C. § 112(f), which provides:

12

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.
35 U.S.C. § 112(f). 5
“A means-plus-function limitation recites a function
to be performed rather than definite structure or materials for
performing that function.”

Easyweb Innovations, LLC v. Twitter,

Inc., No. 11-CV-4550, 2016 WL 1253674, at *13 (E.D.N.Y. Mar. 30,
2016) (quoting Lockheed Martin Corp. v. Space Sys./Loral, Inc.,
324 F.3d 1308, 1318 (Fed. Cir. 2003)), aff’d, 689 F. App’x 969
(Fed. Cir. 2017).

As such, a means-plus-function limitation

“represents a quid pro quo by permitting inventors to use a
generic means expression for a claim limitation provided that
the specification indicates what structure(s) constitute(s) the
means.”

Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch.,

LLC, 677 F.3d 1361, 1367 (Fed. Cir. 2012) (quoting Atmel Corp.
v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir.
1999)).
In construing a means-plus-function limitation, courts
employ a two-step approach, by which they first identify and
5 The provision contained in § 112(f) was previously recited in Paragraph 6 of
35 U.S.C. § 112, before the America Invents Act (“AIA”) took effect. See
Driessen v. Sony Music Entm’t, 640 F. App’x 892, 894 n.2 (Fed. Cir. 2016);
Ivera Med. Corp. v. Hospira, Inc., 801 F.3d 1336, 1342 n.4 (Fed. Cir. 2015).

13

construe the claimed function, and then identify the
corresponding structure that performs that function.

Id.

(citing Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d
1324, 1332 (Fed. Cir. 2006)); Easyweb, 2016 WL 1253674, at *13
(citing Lockheed Martin, 324 F.3d at 1318-20).

The function is

construed to include the limitations contained in the claim
language, whereas the structure is construed to include the
structure or material disclosed in the patent’s specification
that performs the claimed function, as well as any equivalents
of the disclosed structure or material.

Easyweb, 2016 WL

1253674, at *13-14 (citations omitted).
“It is well-established that the specification must be
read as a whole to determine the structure capable of performing
the claimed function.”

Chicago Bd., 677 F.3d at 1367 (quoting

Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379 (Fed. Cir.
2001)) (internal quotation marks omitted).

A structure

disclosed in the specification, however, will be construed as a
corresponding structure “only if the specification or
prosecution history clearly links or associates that structure
to the function recited in the claim.”

Id. (quoting Med.

Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1210 (Fed. Cir. 2003)).

A structure that is not sufficiently

disclosed in the specification may nonetheless be protected
through “structural equivalence” if the differences between the
14

structure disclosed in the specification and the undisclosed
structure are “insubstantial,” i.e., “if the assertedly
equivalent structure performs the claimed function in
substantially the same way to achieve substantially the same
result as the corresponding structure described in the
specification.”

Easyweb, 2016 WL 1253674, at *14 (quoting

Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed.
Cir. 1999)).

Moreover, it is well-established that “means-plus-

function claims are limited to the particular structures the
specification describes as performing the recited function (and
their statutory equivalents), even if a person of ordinary skill
in the art would know what other structures could be employed to
perform the function.”

Id. (citing relevant Federal Circuit

precedent).
DISCUSSION
As discussed above, the sole claim term in dispute in
the instant case is “means for slackening” as it is recited in
Claim 1 of the ‘016 Patent.

Claim 1 of the ‘016 Patent

provides, in relevant part: “a means for slackening an upper
concave portion while simultaneously keeping a lower portion of
the belt taut, preventing said lower portion from drooping down
during rotation and exertion of walking or running force upon
said upper concave portion of said closed loop treadmill belt.”
(‘016 Patent 6:42-47.)

Three embodiments, which correspond to
15

illustrations contained in Figures 2, 3, and 4 of the ‘016
Patent, are described in detail in the specification, designed
to prevent the lower portion of the treadmill belt from drooping
down while maintaining the upper concave surface.

(Id. at 3:11-

19, 4:61-5:20.)
The parties agree that the claim term at issue should
be construed as a means-plus-function limitation, and that the
claimed function should be construed as slackening the upper
concave or curved portion of the treadmill belt, while
simultaneously keeping the lower portion taut.
15; Def. Opp. at 2.)

(See Pl. Mem. at

Further, the parties do not dispute that

the structures claimed in Claim 1 include the structures
described in Figures 2, 3, and 4 of the ‘016 Patent
specification.

(Def. Opp. at 2, 9; ECF No. 182, Reply in

Opposition to Defendants’ Responsive Claims Construction Brief
(“Pl. Repl.”) at 6.)

Thus, the sole issue in dispute is whether

the claim should be limited to those structures described in
Figures 2, 3, and 4, or whether those figures should be
construed as “exemplary,” and the claim should, accordingly, be
construed to include other structures, such as Figure 1 of the
‘265 Application.

(Pl. Mem. at 13; Def. Opp. at 7-8.)

Defendant argues that Claim 1 must be limited to the
structures specifically disclosed in Figures 2, 3, and 4 of the
‘016 Patent.

(Def. Opp. at 7-8.)
16

Plaintiffs, however, assert

that the claim term “should not be construed to limit the
claimed scope to any one particular example or species
embodiment disclosed by the ‘265 application, the ‘016 Patent or
the ‘619 Patent” and should instead be construed “broadly enough
to read on any disclosed species and equivalents thereof, that
function to keep the lower part of the belt from drooping and/or
the upper part of the belt slack.”

(Pl. Mem. 15-16.)

Plaintiffs contend that they have defined the phrase “means for
slackening” with sufficient “deliberateness, precision, and
clarity” to provide sufficient notice of its meaning to one of
ordinary skill of the art.

(Id. at 16.)

Plaintiffs further

assert that the incorporation of the ‘265 Application by
reference in the ‘016 Patent specification renders it a part of
the written description for purposes of construing the scope of
the claim.

(Pl. Repl. at 3.)

In addition, plaintiffs assert

that the limitation included in Claim 12 gives rise to a
rebuttable presumption that such limitation is not present in
Claim 1.

(Pl. Mem. at 17.)
Upon consideration of the parties’ respective

arguments, presented in their motion papers and at the Markman
hearing, as well as the intrinsic record, expert testimony, and
controlling precedent, the court finds that Claim 1 of the ‘016
Patent must be construed as limited to the structures
specifically described in the specification, i.e., those
17

disclosed in Figures 2, 3, and 4, and their equivalents.

It is

well-settled in the Federal Circuit that, in the context of
means-plus-function limitations, exemplary language may not be
construed to include structures other than those specifically
described in the specification.

See Easyweb, 2016 WL 1253674,

at *14 (citing cases in which the Federal Circuit found
corresponding structures under § 112(f) to be limited to those
described in the specification and equivalents thereof).

Thus,

although the ‘016 Patent contains exemplary language, such as
“it is noted that the invention is not limited to the precise
embodiments shown in drawings,” (‘016 Patent 2:65-67), and “no
unnecessary limitations are to be construed by the terms used or
illustrations depicted . . .

since the terms and illustrations

are exemplary only, and are not meant to limit the scope of the
present invention” (id. at 6:20-24), this language cannot expand
the scope of the means-plus-function limitation, without
specifically disclosing the additional structures sought to be
included in the claim.
Similarly, with respect to plaintiffs’ arguments
regarding the ‘265 Application, which plaintiffs contend should
be construed as part of the specification because it is
incorporated by reference therein, the court finds that such
incorporation by reference is insufficient to expand the scope
of the means-plus-function limitation, without a specific
18

description of the incorporated structure.

Although the Federal

Circuit has held that provisional patent applications may be
incorporated by reference to define a structure for purposes of
§ 112(f), it has found such incorporation by reference
sufficient where the patent explicitly referenced the
incorporated application in its specific description of the
corresponding structure.

See Otto Bock HealthCare LP v. Össur

HF, 557 F. App’x 950, 955-56 (Fed. Cir. 2014) (finding that a
patent application may be incorporated by reference to define
structure in a means-plus-function claim, and that the district
court did not err in referring to the application’s
incorporation by reference where the structure was specifically
described in the patent’s specification “as disclosed in [the
patent application].”). 6
Here, in contrast, plaintiffs rely on a general
introductory statement incorporating the ‘265 Application by
reference into the ‘016 Patent (see ‘016 Patent at 1:5-12),
without specifically referencing any structures disclosed
therein.

Rather, plaintiffs contend that Claim 1 should be

construed to include the “generic claim that covers each and
The court further notes that, although the case relied upon by plaintiffs at
the Markman hearing, Vederi, LLC v. Google, Inc., 744 F.3d 1376 (Fed. Cir.
2014), demonstrates an instance in which a provisional patent application was
incorporated by reference, and where such incorporation was relevant to claim
construction, the patent at issue in Vederi did not employ a means-plusfunction limitation under § 112(f), and its reasoning is, therefore, not
applicable to the court’s analysis of the claim term presently at issue.
(Tr. at 41:19-23, 43:2.)
6

19

every species embodiment found in the ‘265 provisional
application and Figs. 2-4 of the patents.”

(Pl. Repl. at 8.)

Looking at the terms of the ‘016 Patent, the
specification does not reference the ‘265 Application in its
descriptions of the “means for slackening” or otherwise in its
discussion of the corresponding embodiments.

Further, as

discussed during the Markman hearing, the ‘265 Application, and
photograph of the wooden prototype contained therein, do not
disclose the specific structure intended to perform the
slackening function.

(See Pl. Mem. Ex. D; Tr. 15:8-18.)

Thus,

the generic incorporation by reference is insufficient to
provide proper notice of additional structures sought to be
included in the means-plus-function claim limitation in the ‘016
Patent.

See Pressure Prods. Med. Supplies, Inc. v. Greatbatch

Ltd., 599 F.3d 1308, 1317 (Fed. Cir. 2010) (“Trial courts cannot
look to the prior art, identified by nothing more than its title
and citation in a patent, to provide corresponding structure for
a means-plus-function limitation. . . . Simply mentioning prior
art references in a patent does not suffice as a specification
description to give the patentee outright claim to all of the
structures disclosed in those references.”).
Thus, in light of the “quid pro quo” nature of
plaintiffs’ reliance on a means-plus-function limitation, and
the accompanying duty of a patentee to draft the specification
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to specifically disclose the claimed structures, discussed
above, the court cannot construe the claim term at issue to
encompass structures that are not specifically disclosed in the
‘016 Patent.

Further, as discussed above, plaintiffs have not

disclosed any additional structures in the ‘016 Patent
specification through the incorporation of ‘265 Application, as
required to provide clear notice of the structures encompassed
by the means-plus-function limitation.

The court, therefore,

finds that “means for slackening,” as it is recited in Claim 1
of the ‘016 Patent, must be construed as limited to only those
structures specifically disclosed in the specification, namely,
Figures 2, 3, and 4, which, as set forth in the specification,
perform the claimed function of maintaining the concave or
curved surface of the upper portion of the treadmill belt while
keeping the lower portion taut.
The court further notes, however, that the court’s
construction of the means-plus-function limitation, contained in
Claim 1 of the ‘016 Patent, also protects any structure deemed
to be an “equivalent,” which is a question of fact to be
addressed at the infringement stage following claim
construction.

Thus, plaintiffs’ infringement claims may

nonetheless turn on whether the descriptions in the ‘265
Application qualify for protection as “equivalents” under the
court’s instant construction of the claim term at issue.
21

See

Pressure Prods., 599 F.3d at 1317 (“Although many of the
disclosed alternatives may well be determined to be structural
equivalents permitted by [§ 112(f)]—a question of fact for the
jury—these alternative methods of [performing the disclosed
function] cannot be treated as the disclosed structures . . .
.”); see also Lockheed Martin, 324 F.3d at 1320 (“An accused
structure that does not literally infringe a means-plus-function
claim may nevertheless infringe under the doctrine of
equivalents.”).
Accordingly, although the court finds that plaintiffs’
reliance on the concept of “equivalents” to encompass structures
not specifically disclosed in Figures 2, 3, or 4 (see, e.g., Tr.
at 9:11-16, 10:10-11, 12:13-13:8), does not permit construction
of the means-plus-function claim limitation to include such
undisclosed structures, the court notes that this issue may be
addressed further at the infringement stage of the instant
litigation.

22

CONCLUSION
For the foregoing reasons, the disputed claim term,
“means for slackening” as it is recited in Claim 1 of the ‘016
Patent, shall be construed as detailed in this Memorandum and
Order.

As discussed during the Markman hearing, the parties are

encouraged to confer in good faith with each other and their
respective clients regarding a potential resolution.

The

parties shall jointly advise the court by letter filed on ECF by
no later than November 28, 2017 how they intend to proceed,
including whether they will seek a settlement conference before
Magistrate Judge Tomlinson, or, if the parties intend to proceed
with motion practice, a joint proposed briefing schedule for
summary judgment.
Dated:

November 20, 2017
Brooklyn, New York

_________
/s/
Kiyo A. Matsumoto
United States District Judge

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