John Mezzalingua Associates, Inc v. Corning Gilbert Inc.

Filing 67

MEMORANDUM-DECISION and ORDER - ORDERED that Magistrate Judge David E. Peebles September 5, 2012 Report-Recommendation and Order (Dkt. No. 59) is ADOPTED in its entirety; and it is further ORDERED that the following meanings shall be affixed t o the patent claim terms in dispute: Disputed Term Proposed Construction Cylindrical Body Member No Construction Necessary First End No Construction Necessary Cylindrical Sleeve No Construction Necessary First Central Bore A c avity lying between the inner wall of the cylindrical sleeve (194 Patent) or connector body (940 Patent) and the tubular post (194Patent) or the post (940 Patent) Compression Ring structure of a connector tha t deforms the rear end portion ofthe cylindrical sleeve inwardly toward the tubular post when slidaxially over the cylindrical body member Central Passageway a cavity in the center of thecompression ring (194 Patent) or fast ener member (940 Patent) extending between the first and second ends thereof. Commensurate mean of corresponding extent, magnitude, or degree;proportionate, adequate. Said Inwardly Tapered Annular No Construction Necessar y Wall Causing Said Rear End Portion of Said Cylindrical Sleeve to be Deformed Inwardly Connector Body Member No Construction Necessary Fastener Member the structure of the connectorthat deforms the connector body member inw ardly toward the post when slid over the connectorbody member ORDERED parties to notify the court, within fourteen (14) days of the date of this Memorandum-Decision and Order of their intentions regarding consent to have Judge Peebles conduct all further proceedings in this case under 28 U.S.C. § 636(c). Signed by Chief Judge Gary L. Sharpe on 11/21/2012. (Attachments: # 1 Judge Peebles' Report Recommendation) (jel, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF NEW YORK
____________________________________
JOHN MEZZALINGUA ASSOCIATES, INC.,
d/b/a PPC,
Plaintiff,
Civ. Action No.
5:11-CV-0761 (GLS/DEP)
v.
CORNING GILBERT, INC.,
Defendant.
____________________________________
APPEARANCES:

OF COUNSEL:

FOR PLAINTIFF:
HISCOCK & BARCLAY, LLP
One Park Place
300 South State Street
Syracuse, NY 13202-2078

DOUGLAS J. NASH, ESQ.
GABRIEL M. NUGENT, ESQ.
JOHN D. COOK, ESQ.

FOR DEFENDANT:
DLA PIPER LLP
500 Eighth Avenue NW
Washington, DC 22004

JOSEPH P. LAVELLE, ESQ.
ANDREW N. STEIN, ESQ.

HARTER SECREST LAW FIRM
1600 Bausch & Lomb Place
Rochester, NY 14604

DAVID M. LASCELL, ESQ.
ERIKA N.D. STANAT, ESQ.
JERAULD E. BRYDGES, ESQ.

DAVID E. PEEBLES
U.S. MAGISTRATE JUDGE

REPORT AND RECOMMENDATION
This action involves two direct competitors in the cable and
telecommunications industry with a history of prior judicial and
administrative intellectual property skirmishes, and who once again find
themselves embroiled in a patent dispute. Plaintiff John Mezzalingua,
Inc., d/b/a PPC (“PPC”) has commenced this action against defendant
Corning Gilbert, Inc. (“ Corning Gilbert”) alleging infringement of two
patents relating to coaxial cable connectors through Corning Gilbert’s
marketing of its UltraShield and UltraRange series of allegedly infringing
connectors. Corning Gilbert has denied infringement and counterclaimed
seeking a declaratory judgment of non-infringement, patent invalidity, and
unenforceability, additionally asserting pendent state law counterclaims for
intentional interference with business relations, abuse of process, and
commercial disparagement.
The parties have sought guidance from the court with respect to ten
disputed claim terms appearing within the two patents in suit.1 In light of
that request the matter has been referred to me by Chief Judge Gary L.
1

Under this court’s local patent rules, which became effective on January
1, 2012 but have been applied to this action, despite having been filed prior to that
date, ten is the maximum number of claim terms which may be presented to the court
for construction, absent relief from that limitation. See N.D.N.Y. L. Pat. R. 4.4(b).
2

Sharpe, the assigned district judge, for the issuance of a report and
recommendation to him regarding claim construction. The following
constitutes my reported findings and recommendations, based upon
comprehensive submissions from the parties and a claim construction
hearing conducted by the court.
I.

BACKGROUND
At issue in this action are two patents issued to inventor Noah P.

Montena, who is employed at PPC as a Principal Engineer, both of which
disclose a cable connector and method of operation. The first, U.S.
Patent No. 6,558,194 (the “’194 Patent”), was issued on May 6, 2003.
The second, U.S. Patent No. 6,848,940 (the “’940 Patent”) followed on
February 1, 2005. Both patents relate to connectors used to couple
coaxial cable to such devices as televisions, cable boxes, and cable
modems.
The technology involved in the two patents and the coaxial cable
industry generally is not particularly complex. Coaxial cables provide a
means for transmission of electronic signals, and typically are comprised
of four elements, including 1) an outer coating, to act as an environmental
seal; 2) a metal braid, or shield, designed to prevent unwanted external

3

magnetic signals and other influences from interfering with the electrical
signals being conveyed by the cable; 3) a dielectric layer, which acts as
an insulator; and 4) a center conductor through which the electrical
signals travel. Montena Decl. (Dkt. No. 34-1) ¶ 4. A coaxial cable
connector is typically attached to the end of a length of cable in order to
extend the physical and electromagnetic shielding structure of the cable
through to the receiving port of the television or other device to which the
cable is being attached. Id. at ¶ 5. The connector typically facilitates
attachment to the port through use of a threaded nut or by other similar
means. Id.
Early cable connectors utilized a crimping process, usually achieved
through use of a hexagonal crimping tool that permanently deformed the
connector, causing it to become attached to the cable, in order to attach a
connector to a cable end. Montena Decl. (Dkt. No. 34-1) ¶ 6. One
prominent disadvantage of hexagonal crimping, prompting those in the
field to explore better solutions, was the failure of a crimp-type connector
to provide a fully enclosed, impregnable seal between connector and
cable. Montena Decl. (Dkt. No. 34-1) ¶ 6.
In the mid-1990's compression-type connectors, or radial seal

4

connectors, were introduced. Montena Decl. (Dkt. No. 34-1) ¶ 7. Among
the advantages of such compression-type connectors was that they
provided for a water-tight, 360E seal. Id. There were disadvantages
associated with early compression-type connectors, however, in that many
involved more than one component and were therefore difficult to
manipulate, and often were not “universal”, meaning that they were not
designed to fit onto cable ends of differing diameters. Id.
In 1997, while working in his capacity for PPC, Montena conceived
of a new type of compression connector that was both universal and
provided for the benefit of a water-tight seal. Montena Decl. (Dkt. No. 341) ¶ 8. Montena’s invention, which is disclosed and claimed in the ’194
and ‘940 patents, includes five principal elements, including 1) a tubular
post; 2) a nut or other means of attaching a connector to a video port; 3) a
cylindrical body member that on one end is attached to the tubular post
and on the other includes a cylindrical sleeve or other deformable portion;
4) a compression ring; and 5) a tapered wall or similar dimensioning in the
compression ring that, when the compressing ring is slid axially over the
cylindrical body member, deforms part of the cylindrical sleeve inwardly
against the jacket of the coaxial cable. Id. One of the predominant,

5

innovative features of Montena’s invention is the use of a compression
ring, also called a fastener member, that is dimensioned such that when
the cable and connector are joined the compression ring deforms the body
member of the connector inwardly against the cable jacket. This action
serves two purposes, creating a mechanical engagement with the cable
and forming a water tight seal.
An example of Montena’s invention is included in the following
drawing, which depicts a longitudinal cross-sectional view of the preferred
embodiment of the invention disclosed in the ’194 patent:

6

’194 Patent, Fig. 1. That figure shows a connector 10 ready for placement
on the prepared end of a cable 12. The cable includes an electrical
center conductor 14 surrounded by a braid conductor or conductive
grounding sheath 16 by a foil 18 and an insulator core or dielectric 20. A
dielectric covering or sheathing jacket 22 surrounds the braid and
comprises the outermost layer of the cable.
Turning to the connector 10, it is dimensioned to accommodate
receiving the prepared end of the coaxial cable, and consists of a first
body member that includes a connector body or cylindrical body member
24 and a post member 26. The connector 10 also has a second body
member, or a fastener member 28. The post 26 typically is a tubular
member having a first opening at the first end 30 and a second opening at
the second end 32. The post or a tubular post 26 defines the first inner
cavity 34. The first outer cavity or first central bore 36 is open at a first
end of the cylindrical body member 24 and is closed at the other end or
second end of the connector body or cylindrical body member 24 together
with the post member 26.
In the preferred embodiment the connector body 24 and the post
member 26 are typically separate components, with the connector body
7

24 being press fitted into the outer surface of the post member 26. The
connector body 24 is preferably formed of brass or a copper alloy, and the
post member is composed of brass, although in an alternative preferred
embodiment the connector body 24 and post member 26 can be formed
integrally as a single piece, and the connector body 24 can be fabricated
of a plastic composition.
The focus of plaintiff’s infringement claims in this action are two
product lines offered by Corning Gilbert. The first product, the UltraRange
connector, was developed in or about 2004 in an effort to design around
the ’194 Patent following a jury verdict in Wisconsin in favor of PPC and
against Corning Gilbert, finding infringement with regard to Corning
Gilbert’s earlier UltraSeal connectors. The second accused device, the
UltraShield, was introduced in 2010 and operates much in the same way
as the UltraRange connector in terms of the manner in which it forms a
seal with a cable end. The UltraRange and UltraShield connectors differ
from PPC connectors manufactured under the ’194 and ’940 Patents in
the manner in which a water tight seal is accomplished between connector
and cable. Unlike the PPC connector, the UltraRange and UltraShield
products do not include bodies that deform. Instead, a plastic gripper is
8

utilized to slide under the connector body and secure the cable, also
serving to seal the connector.
II.

PROCEDURAL HISTORY
Plaintiff commenced this action on July 5, 2011. Dkt. No. 1. Issue

was thereafter joined by the filing of an answer on behalf of Corning
Gilbert on September 6, 2011, generally denying the material allegations
set forth in plaintiff’s complaint and, inter alia, containing defenses and
counterclaims asserting non-infringement, invalidity, and unenforceability
of the patents in suit. Dkt. No. 6.
An early summary judgment motion by Corning Gilbert on the issue
of non-infringement was denied by the court as premature. See Dkt. Nos.
19, 21, 22, and text order dated 11/18/11. Since then, as a precursor to
adjudication of the various infringement claims and defenses raised in the
action, the parties have requested the court’s guidance in defining certain
disputed terms contained within the claims of the two patents in suit,
including the following:
Term

Patent

Cylindrical Body Member

’194

First End

’194 and ’940

9

Cylindrical Sleeve

’194

First Central Bore

’194 and ’940

Compression Ring

’194 and ’940

Central Passageway

’194 and ’940

Commensurate

’194

Said Inwardly Tapered Annular
Wall Causing Said Rear End
Portion of Said Cylindrical Sleeve
to be Deformed Inwardly

’194

Connector Body Member

’940

Fastener Member

’940

The parties have submitted extensive briefing and materials
regarding these claim terms, see Dkt. Nos. 34, 36, 38, and 39, and a
claim construction hearing was held by the court on April 25, 2012.
III.

DISCUSSION
A.

Claim Construction: The Legal Framework

Patent claim construction represents an issue of law to be decided
by the court. Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1329
(Fed. Cir. 2012); Cybor Corp. V. FAS Techs., Inc., 138 F.3d 1448, 1456
(Fed. Cir. 1998) (en banc). The guiding principles associated with patent
claim construction are well-established and not particularly controversial.
10

Perhaps the most comprehensive discourse to date regarding the
claim construction calculus is found in the Federal Circuit’s en banc
decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), cert.
denied, 546 U.S. 1170, 126 S. Ct. 1332 (2006). In Phillips, though with
considerable elucidative discussion regarding the relative importance of
intrinsic and extrinsic evidence, the Federal Circuit in essence endorsed
its earlier decision in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576
(Fed. Cir. 1996), previously regarded by the courts and patent
practitioners as defining the contours of the claim construction inquiry.
Phillips, 415 F.3d at 1324. The principal teaching of Phillips – and not a
significant departure from earlier claim construction jurisprudence – is that
claim terms should generally be given an ordinary and customary meaning
as understood by a person of ordinary skill in the art at the time of the
invention when read in the context of the specification and prosecution
history.2 Phillips, 415 F.3d at 1313; Thorner v. Sony Computer Entm’t Am.
2

PPC proposes that a person of ordinary skill in the art in this case should
be defined as having at least a bachelor’s degree in engineering and several years of
experience in the cable and telecommunications industry relating to the design,
manufacture, or utilization of coaxial cable connectors in communications systems.
Corning Gilbert is generally in agreement with this definition, although it posits that
many years of experience in the cable and telecommunications industry could serve as
a substitute for the formal education component of the definition. Both parties agree,
in any event, that claim construction in this case will not turn on the definition of a
person of ordinary skill in the art.
11

LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); Aventis Pharma S.A., 675
F.3d at 1329; see also CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002) (“Generally speaking, we indulge a ‘heavy
presumption’ that a claim term carries its ordinary and customary
meaning.”) (citations omitted).
There are two exceptions to this general rule. The first involves
cases in which the patentee has acted as his or her own lexicographer,
specifying a particularized definition to be attributed to a claim term. See
Thorner, 669 F.3d at 1365; Phillips, 415 F.3d at 1316; Vitronics Corp., 90
F.3d at 1580. To act as his or her own lexicographer a patentee must
clearly and unequivocally manifest an intention to define a term differently
than the plain and ordinary meaning which would otherwise obtain.
Aventis Pharma S.A., 675 F.3d at 1350; Thorner, 669 F.3d at 1365.
Under the second exception, a claim term may also properly be
given a meaning which is different and more restrictive than its customary
meaning when a patentee has made it clear, either through the patent’s
specification or during patent prosecution, that the invention does not
include a full range of a particular term, and he or she has thereby

12

disavowed the full scope of a claim’s scope. Thorner, 669 F.3d at 1366;
Aventis Pharma S.A., 675 F.3d at 1330; see also SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir.
2001). As is the case with regard to a patentee acting as a lexicographer,
this exception to the otherwise general rule that patent terms should be
given their ordinary meaning is both narrow and exacting; “[t]o constitute
disclaimer, there must be a clear and unmistakable disclaimer.” Thorner,
669 F.3d at 1366-67.
While the words of a patent claim will generally control, they should
not be interpreted in isolation, in derogation of other portions of the patent;
instead “the person of ordinary skill in the art is deemed to read the claim
term not only in the context of the particular claim in which the disputed
term appears, but in the context of the entire patent, including the
specification.” Phillips, 415 F.3d at 1313. In this regard, a patent
specification, which some liken to an internal dictionary, must be carefully
reviewed to determine whether, for example, the inventor has used a
particular term in a manner inconsistent with its ordinary meaning. Id. at
1313-14; see also Vitronics, 90 F.3d at 1582 (citing Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (1995)).

13

A patent’s specification often constitutes the “single best guide to
the meaning of a disputed term.” Vitronics, 90 F.3d at 1582. When
resorting to a patent’s specification for guidance with respect to disputed
claim terms one must consider it as a whole, and all portions should be
read in a manner that renders the patent internally consistent. Budde v.
Harley-Davidson, Inc., 250 F.3d 1369, 1379-80 (Fed. Cir. 2001). “[W]hile
it is true that claims are to be interpreted in light of the specification and
with a view to ascertaining the invention, it does not follow that limitations
from the specification may be read into the claims[,]” Sjolund v. Musland,
847 F.2d 1573, 1581 (Fed. Cir. 1988) (emphasis in original), “[n]or should
particular embodiments in the specification be read into the claims; the
general rule is that the claims of a patent are not limited to the preferred
embodiment.” Cornell Univ. v. Hewlett-Packard Co., 313 F. Supp. 2d 114,
126 (N.D.N.Y. 2004) (Mordue, C.J.) (citing, inter alia, Texas Digital Sys.,
Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204 (Fed. Cir. 2002)).
In addition to the claim terms themselves and the patent’s
specification, a third category of relevant intrinsic evidence worthy of
consideration is the history surrounding prosecution of the patent. That
history, which is customarily though not always offered to assist a court in

14

fulfilling its claim construction responsibilities, is generally comprised of
the complete record of proceedings before the PTO including,
significantly, any express representations made by the applicant regarding
the intended scope of the claims being made, and an examination of the
prior art. Vitronics, 90 F.3d at 1582-83. Such evidence, which typically
chronicles the dialogue between the inventor and the PTO leading up to
the issuance of a patent and thus can act as a reliable indicator of any
limitations or concessions on the part of the applicant, oftentimes proves
highly instructive on the issue of claim construction. Philips, 415 F.3d at
1313 (“We cannot look at the ordinary meaning of the term . . . in a
vacuum. Rather, we must look at the ordinary meaning in the context of
the written description and the prosecution history.”) (quoting Medrad, Inc.
v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005)).
B.

Construction of Disputed Terms
1.

The Patent Claims

Claims 1 and 2 of the ’194 and ’940 patents, which are nearly
identical, serve as a useful backdrop for the court’s claim construction
analysis. Claim 1 of the ’194 patent discloses the following:
1. A connector for coupling an end of a coaxial cable to a
threaded port, the coaxial cable having a center conductor
15

surrounded by a dielectric, the dielectric being surrounded by
a conductive grounding sheath, and the conductive grounding
sheath being surrounded by a protective outer jacket, said
connector comprising:
a. a tubular post having a first end adapted to be
inserted into an exposed end of the coaxial
cable around the dielectric thereof and under
the conductive grounding sheath thereof, said
tubular post having an opposing second end;
b. a nut having a first end for rotatably engaging
the second end of said tubular post and having
an opposing second end with an internally
threaded bore for threadedly engaging the
threaded port;
c. a cylindrical body member having a first end
and a second end, the first end of said
cylindrical body member including a cylindrical
sleeve having an outer wall of a first diameter
and an inner wall, the inner wall bounding a first
central bore extending about said tubular post,
the second end of said cylindrical body member
engaging said tubular post proximate the
second end thereof, said cylindrical sleeve
having an open rear end portion for receiving
the outer jacket of the coaxial cable, said open
rear end portion being deformable;
d. a compression ring having first and second
opposing ends and having a central
passageway extending there-through between
the first and second ends thereof, the first end
of said compression ring having a first [nontapered (claim 1)/constant diameter (claim 2)]
internal bore of a diameter commensurate with
the first diameter of the outer wall of said
16

cylindrical sleeve for allowing the first end of
said compression ring to extend over the first
end of said cylindrical body member, the central
passageway of said compression ring including
an inwardly tapered annular wall leading from
the first internal bore and narrowing to a
reduced diameter as compared with the first
diameter; and
e. said inwardly tapered annular wall causing said
rear end portion of said cylindrical sleeve to be
deformed inwardly toward said tubular post and
against the jacket of the coaxial cable as said
compression ring is advanced axially over the
cylindrical body member toward the second end
of said cylindrical body member.
’194 Patent 13:21-14:8. Claim 1 of the ’940 Patent reads as follows:
1. A connector for coupling an end of a coaxial
cable to a threaded port, the coaxial cable having a
center conductor surrounded by a dielectric, the
dielectric being surrounded by a protective outer
jacket, said connector comprising:
a. a post having a first end adapted to be
inserted into an end of the coaxial cable
around the dielectric and under the protective
outer jacket thereof, said post having an
opposing second end;
b. a connector body having a first end and a
second end, the first end of said connector
body having an outer wall and an inner wall,
the second end of said connector body
operatively attached to said post, the inner
wall bounding a first central bore extending
about said post for receiving the coaxial
17

cable within the first central bore, said first
end of said connector body member being
deformable; and
c. a fastener member having a first end and
a second opposing end with a central
passageway defined between the fastener
member first end and the fastener member
second end for allowing a portion of the
coaxial cable to pass there through, the
fastener member secured to the connector
body prior to installation over the end of the
coaxial cable in a pre-installed first
configuration, the central passageway being
dimensioned to compress the connector
body radially inwardly to decrease the
volume of the first central bore when the
fastener member is slidingly moved from the
first preinstalled configuration toward the
second end of the connector body, wherein
said fastener member causes said connector
body to be deformed inwardly toward said
post and against the protective outer jacket
of the coaxial cable as said fastener member
is advanced over the connector body toward
the second end of said connector body.
’940 Patent 13:36-14:02.
2. Cylindrical Body Member/Connector Body Member
The first, and seemingly the most significant, terms requiring
construction are two separate but related terms appearing in the two
patents in suit, “a cylindrical body member”, as utilized in the ’194 Patent,
and “a connector body member”, as contained in the ’940 Patent. The
18

parties have offered the following proposed constructions of those terms:
Claim Term

PPC’s Construction

Corning Gilbert’s Construction

cylindrical body member

Structure of the connector that
includes a cylindrical sleeve,
and is engaged with a tubular
post

The generally cylindrical shaped
outer portion of the connector
that surrounds the tubular post
to define a central bore which is
a single, unitary piece.

Structure of the connector that
is, in part, deformable, and is
attached to a post

The outer portion of the
connector that surrounds the
tubular post to define a central
bore. In light of the
specification, the connector
body/cylindrical body member
should be construed as a
single, unitary piece.

(’194 Patent)

connector
body/connector body
member
(’940 Patent)

The chief battleground regarding these two terms involves the
question of whether the specified member must be a single, unitary piece,
as argued by Corning Gilbert, or instead can be comprised of more than
one component, as PPC contends.3 Also at issue is whether the member
is properly defined as constituting the “outer portion” of the connector, as
Corning Gilbert maintains.
PPC argues that no fewer than three administrative determinations
have been issued, all revealing that the cylindrical body member specified
in the ’194 patent need not be a single unitary piece, asserting that those

3

This distinction takes on critical significance in light of the fact that
Corning Gilbert’s accused connectors utilize two separate parts which, together,
comprise the connectors’ structure.
19

decisions are entitled to deference on the part of this court. A review of
the first of those, an initial determination issued by United States
International Trade Commission (“ITC”) Administrative Law Judge E.
James Gildea, dated October 13, 2009, fails to support that assertion.
See Nash Supplemental Decl. (Dkt. No. 38-1) Exh. L. In point of fact, ALJ
Gildea’s decision makes it clear that he did not define any claim terms of
the ’194 patent in issue, and therefore offered no construction regarding
those terms. See id. at p. 27. It should be noted, moreover, that the
parties did not dispute the fact that the accused devices in that matter
infringed Claims 1 and 2 of the ’194 Patent. See id. at pp. 53-55.
The second administrative determination of relevance came in the
form of a letter decision issued by Charles R. Steuart, Chief of the
Intellectual Property Rights Branch for the U.S. Customs and Border
Protection, Department of Homeland Security, in which the argument now
being made by Corning Gilbert was rejected; that agency concluded that
the physical samples and diagrams provided by Corning Gilbert depicted
“a multi-body member that, in its totality, satisfies the cylindrical body
member element [of the ’194 patent]”. See Nash Decl. (Dkt. No. 34-2)
Exh. C at pp. 18. That determination resulted in the issuance of a seizure

20

and forfeiture order aimed at the infringing coaxial cable connectors,
which included Corning Gilbert’s UltraShield and UltraRange connectors.4
Id. at Exh. D. The court has been advised, however, that on April 28,
2012, after the Markman hearing in this action, the U.S. Customs and
Boarder Protection agency decided to reverse its position and to allow
Corning Gilbert to import UltraRange and UltraShield connectors into the
United States, resulting in a stay of those proceedings to allow the parties
to enter into a stipulated agreement for importation of the connectors.
See Letter, dated May 2, 2012, from Joseph P. Lavelle, Esq. (Dkt. No.
42). Based upon this development and the ambiguity of those
administrative decisions, I have chosen not to accord them deference and
instead have engaged in my own de novo claim construction, utilizing the
well-established principles articulated by the Federal Circuit in Vitronics,
Phillips, and their progeny.
Based upon my independent review, I recommend that the court
reject both parties’ proposed definitions and that these terms need no

4

The third agency determination came from the ITC and addressed a
connector sold by a non-party, Hanjiang Fei Yu Electronics Equipment Factory. See
Nash Supplemental Decl. (Dkt. No. 38-1) Exh. L. That connector, like Corning
Gilbert’s UltraShield and UltraRange connectors, employed a cylindrical body member
comprised of two pieces, in that instance a metal piece and a deformable braid plastic
piece. See id.
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further construction. The disputed terms are both comprised of three
words each of which is of ordinary usage and fully capable of being
understood by a person reading the patents at issue, including a jury
adjudicating any infringement claims. There is no indication in either of
the two patents in suit that the patentee intended to serve as his own
lexicographer and ascribe definitions to one or more of those words that
would depart from ordinary usage. Nor is there any evidence from the
patent specification and prosecution history of disavowal of any portion of
the full scope of the ordinary meaning attributable to those words. As
such, the terms should be given their ordinary and customary meaning.
Thorner, 669 F.3d at 1365.
PPC would have the court import into this term the additional
requirement that the structure representing the cylindrical body member
described in the claims of the ’194 Patent include a cylindrical sleeve
which is engaged with a tubular post. Similarly, with regard to the ’940
Patent, it argues that a connector body member should include a structure
that is in part deformable and is attached to a post. Yet, those additional
limitations garner no support from the available intrinsic evidence. And,
more importantly, those additional constraints echo limitations contained

22

elsewhere within the claims of those patents and would render those
additional limitations redundant if imported into the definition of a
cylindrical body member.
Corning Gilbert’s proposed definition of these terms is equally, if not
more, problematic. Corning Gilbert’s construction would require that the
cylindrical body member surround the tubular post to define a central
bore, again importing additional limitations that are not supported by the
intrinsic evidence. With respect to the ’940 Patent, Corning Gilbert also
would require that the connector body member comprise the “outer
portion” of the connector.
Consideration of Figure 1 of the ’940 Patent, depicting one of its
preferred embodiments, is helpful to understanding Corning Gilbert’s
argument.

23

24

’940 Patent Fig. 1. As can be seen, while the connector body 24 is
engaged with the outside of the post member 26, it is not necessarily true
that it is the outer- most portion of the connectors depicted. Other
components, for example, such as the nut member 44, also help define
outer boundaries of the connector depicted, and in Figure 1 appears to be
larger in diameter than the connector body member 24. Similar
conclusions can be drawn from reviewing Figures 5-7, 12, 14, and 19, all
of which show that the connector body member is not the outer most
portion of the connector depicted.
Corning Gilbert would also limit the terms “cylindrical body member”
and “connector body member” to require that the member constitute a
“single, unitary piece.” The Federal Circuit has had prior occasion to
address an issue similar to that now presented. See CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002). CSS Fitness involved a
patent for a stationary exercise device, commonly referred to as an
elliptical trainer. Id. at 1362. At issue was construction of the claim
limitation “reciprocating member”. Id. Construing that term, the district
court concluded that the term did not cover anything other than a singlecomponent comprising a straight bar, as depicted in the patent’s
25

drawings. Id. In rejecting the district court’s restrictive definition, the
Federal Circuit noted that the customary definition of a member can
include a structure that is not limited to a single component, and found no
basis to conclude that the patentee had intended to use the term in a
more restrictive manner than consistent with its ordinary usage. Id. at
1367.
In support of its effort to limit these two terms in dispute to a single,
unitary piece, Corning Gilbert places heavy reliance upon the Federal
Circuit’s decision in Retractable Techs., Inc. v. Becton, Dickinson and Co.,
653 F.3d 1296 (Fed. Cir. 2011). At issue in that case were patents
disclosing a retractable medical syringe featuring a needle that retracts
into the syringe body following use in order to minimize the risk,
associated with residual contamination, of the user being accidently
pricked. Id. at 1298. Among the claim terms construed by the district
court in that case was “body”, the trial court concluding that the term was
not limited to a single piece structure. Retractable Techs., 653 F.3d at
1304. An appeal from that determination yielded a splintered decision by
the three-judge panel of the Federal Circuit hearing the case. Circuit
Judge Lourie wrote that the term should be limited to a one piece

26

structure, relying heavily upon the patent specifications. 653 F.3d at
1305. While acknowledging that the patent claims could be read to imply
that the body was not intended to be limited to one structure, Judge Lourie
concluded that “[the] implication is not a strong one.” Id. at 1305.
Importantly, Judge Lourie noted that in distinguishing prior art syringes
comprised of multiple pieces, a summary of the invention associated with
one of the patents in suit disclosed that it “feature[d] a one piece hollow
body”, noting that prior art had failed to recognize the possibility of
molding a retractable syringe as a one piece outer body.5 Id. at 1305.
Circuit Judge Plager concurred in the result in Retractable
Technologies, issuing a cautionary reminder that in the end, claim terms
must be interpreted in light of the specification of which they are a part,
and which describes the invention claimed. 653 F.3d at 1311. Chief
Judge Rader, however, authored a strong dissent, focused upon the
court’s construction of the term “body” to require a single piece structure,
finding no support for restricting the ordinary and customary meaning of
the term, as understood by a person of ordinary skill in the art at the time
5

One obvious potentially distinguishing feature of Retractable
Technologies is the fact that the case involved construction of the term “body”, rather
than “body member”.
27

of the invention. Id. at 1311.
The admonition issued by Chief Judge Rader in Retractable
Technologies, Inc. is particularly germaine in this case. While it is
undeniable that all of the embodiments contained within the two patents in
suit depict the cylindrical body member (’194 Patent), and the connector
body member (’940 Patent), as a single component, there is no strong
indication from the specifications or prosecution histories associated with
those two patents of any intention on the part of the patentee to narrow
the scope of the claim term to be more restrictive than would otherwise
prevail when applying the ordinary and customary meaning of the term
“member”.
Indeed, the specifications and embodiments of the two patents
reflect the patentee’s acknowledgment that a “member” can consist of
separate components. The ’194 Patent, for example, discloses that “[t]he
connector 10 has a first body member that includes connector body or
cylindrical body member 24 and post member 26." ’194 Patent 6:47-49.
The patent goes on to state that “[p]referably, the connector body 24 and
the post member 26 are separate components.” ’194 Patent 6:63-64
(emphasis added). This plainly reflects the inventor’s understanding that
28

separate components can be used together to comprise a body member.
In sum, I am not persuaded that the court has been presented with
the sort of compelling evidence required in order to overcome the strong
presumption that the two terms now in dispute should be given their
ordinary and customary meaning. And, since the terms are simple and
readily susceptible of construction by the factfinder in this case, I discern
no need to provide further refinement as sought by the parties with
respect to these two terms.
3. First End
The parties next request construction of the term “first end”, and
have offered the following counter-proposed interpretations:
Claim Term
a first end
(’194 Patent and ’940
Patents)

PPC’s Construction
No construction required. To
the extent construction is
required:

Corning Gilbert’s Construction
The open end of connector
body 24, shown on the right
side of Figure 3 of the ’194
Patent

‘194 Patent: A portion of the
cylindrical body member that
includes a cylindrical sleeve.
‘940 Patent: A portion of the
connector body member that
is deformable and has an
inner wall bounding a first
central bore that extends
about the post for receiving a
coaxial cable.

Like “cylindrical body member” and “connector body member”, the
29

term “a first end” constitutes a simple term readily capable of being
understood by both persons of ordinary skill in the art and factfinders
addressing the claims and defenses in the case. There is no ambiguity in
the language, nor is there anything within the specification or prosecution
history that reflects either that the patentee intended to act as his own
lexicographer and attribute a different definition to that term, or that he
disavowed the full scope the term in connection with his invention.
Corning Gilbert proposes to clarify the term by referring to a figure
depicted in the ’194 Patent. This, however, represents an improper
attempt to cabin the term utilizing one of several embodiments contained
within the patent’s specification. Martek Biosciences Corp. v. Nutrinova,
Inc., 579 F.3d 1363, 1381 (Fed. Cir. 2009) (citing Innova/Pure Water, Inc.
v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004)).
The alternative definitions proposed by PPC fare no better, since they
would import additional limitations not included in the term and not
supported by any attempt by the patentee to act as his own lexicography
or disavow the full range of the term. I therefore recommend a finding that
there exists no need to further construe this disputed term.
4. “Cylindrical Sleeve”

30

The next term in dispute is a “cylindrical sleeve”, with the parties
having offered the following proposed constructions:
Claim Term
cylindrical sleeve
(’194 Patent)

PPC’s Construction

Corning Gilbert’s Construction

No construction required. To
the extent construction is
required:

A cylindrical portion of the first
end of the cylindrical body
member, the rear end portion of
which is deformed when the
compression ring is advanced
axially.

A portion of the first end of the
cylindrical body member that
has an inner wall bounding a
first central bore extending
about the tubular post, and
that has an open rear end
portion for receiving the outer
jacket of the coaxial cable that
is deformable as the
compression ring is slid axially
over the cylindrical body
member.

The term “cylindrical sleeve” is both unambiguous and readily
understood. The term is comprised of two words both of which are
susceptible of common understanding. Dictionary definitions of the words
include the following: “cylindrical” is defined as “of, relating to, or having
the shape of a cylinder, especially a circular cylinder”, THE AMERICAN
HERITAGE DICTIONARY 453 (4th ed. 2000), and “relating to or having the
form or properties of a cylinder”, MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY 288 (10th ed. 1999). The definition of “sleeve” includes “[a]
case into which an object or device fits: a record sleeve”, THE AMERICAN

31

HERITAGE DICTIONARY 1635 (emphasis in original), and “a tubular part (as
a hollow axle or bushing) designed to fit over another part,” MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY 1103.
That the inventor intended to incorporate these common definitions
into his use of the term “cylindrical sleeve” is buttressed by consideration
of Claim 1 of the ’194 Patent, which is representative of use of the term.
There, the cylindrical sleeve is described as being included within the first
end of the cylindrical body member, “having an outer wall of a first
diameter and an inner wall, the inner wall bounding the first central bore
extending about said tubular post, . . .”. ’194 Patent 13:37-41.
Corning Gilbert proposes limiting the term and not according it the
full scope of its ordinary meaning based upon a portion of the patent
prosecution history in which the patentee’s attorney identified for the
Patent and Trademark Office (“PTO”) examiner where a cylindrical sleeve
could be found in one of the disclosed embodiments. See Nash Supp.
Decl. (Dkt. No. 38-1) Exh. M. This portion of the prosecution history,
however, does not support Corning Gilbert’s claim of disavowal, instead
reflecting only that the attorney was merely pointing out for the examiner
where the cylindrical sleeve could be found in the embodiments disclosed,

32

prefacing the disclosure with the signal “e.g.,” which clearly reflects that it
was merely intended to offer an example, and not to restrict the term
beyond its ordinary usage.
Because this claim term is susceptible of being understood, and
finding no persuasive evidence to reflect that the inventor intended a
different usage, I recommend a finding that no further construction is
necessary for this term.6 Surgical Corp., 103 F.3d at 1568.
5. First Central Bore
Another claim term in dispute is “first central bore”. The parties
have offered the following counter-proposed definitions for this term:
Claim Term

PPC’s Construction

6

Corning Gilbert’s Construction

In its proposed construction of this term Corning Gilbert also would add
“the rear end portion of which is deformed when the compression ring is advanced
axially.” While it may be true that under the ’194 Patent this could occur, there is no
basis to incorporate that concept into the definition of cylindrical sleeve, and Corning
Gilbert has offered none in its Markman briefing.
33

a first central bore
(’194 Patent and ’940
Patents)

No construction required. To
the extent construction is
required:

A cavity defined by the outer
wall of the tubular post and the
inner wall of the cylindrical body
member

’194 Patent: A bore that is
bounded by an inner wall of
the cylindrical sleeve and that
extends about the tubular
post.
’940 Patent: A bore that is
bounded by an inner wall of
the connector body and that
extends about the post.

Element (c) of Claims 1 and 2 of the ’194 Patent describes
a cylindrical body member having a first end and a
second end, the first end of said cylindrical body
member including a cylindrical sleeve having an
outer wall of a first diameter and an inner wall, the
inner wall bounding the first central bore extending
about said tubular post. . .
’194 Patent 13:36-41, 14:25-30. The ’940 Patent includes similar
language in element (b), requiring
a connector body having a first end and a second
end, the first end of said connector body having an
outer wall and an inner wall, the second end of
said connector body operatively attached to said
post, the inner wall bounding a first central bore
extending about said post for receiving the coaxial
cable within the first central bore. . .
’940 Patent 13:44-50. According to the specifications of those patents,
the purpose of the first central bore is to house a portion of the cable braid
and cable jacket once the cable is inserted into the connector, permitting
34

the cable braid to make electrical contact with a tubular post in order to
extend the braid’s electromagnetic shield fully to the part to which the
connector is attached. See, e.g., ’194 Patent 6:58-62, 8:19-22.
This term is not particularly controversial. While PPC argues that no
construction is required, it has proposed a definition. That definition is
fairly similar to that offered by Corning Gilbert.
There does not appear to be any material disagreement that the first
central bore essentially represents a cavity lying between the inner wall of
the cylindrical sleeve and outer portion of the tubular post. I therefore
recommend a finding that the term means “a cavity lying between the
inner wall of the cylindrical sleeve (’194 Patent) or connector body (’940
Patent) and the tubular post (’194 Patent) or the post (’940 Patent).”
6. “A Compression Ring” and “A Fastener Member”
The parties next request construction of two related terms, “a
compression ring” as contained within the ’194 Patent, and “a fastener
member”, included within the claims of the ’940 Patent. Those terms,
though somewhat different, describe the same general feature, with the
parties having offered the following proposed constructions:

35

Claim Term
a compression ring
(’194 Patent)

PPC’s Construction
No construction required. To
the extent construction is
required:
Structure of the connector that
deforms the rear end portion
of the cylindrical sleeve
inwardly toward the tubular
post when slid axially over the
cylindrical body member.

Claim Term
a fastener member
(’940 Patent)

PPC’s Construction
Structure of the connector that
deforms the connector body
member inwardly toward the
post when slid over the
connector body member.

Corning Gilbert’s Construction
A body member, distinct from
the cylindrical body member,
which contains an inwardly
tapered annular wall that
compresses the cylindrical
sleeve when the compression
ring is moved axially over the
cylindrical body member.

Corning Gilbert’s Construction
A body member, distinct from
the cylindrical body member,
which contains an inwardly
tapered annular wall that
compresses the cylindrical
sleeve when the compression
ring is moved axially over the
cylindrical body member

Both parties agree that these two terms are used synonymously to
refer to the portion of the patented connecter that, when slid over the
cylindrical or connector body member, causes deformation of the
cylindrical sleeve, in the case of a ’194 Patent, or the first end of the
connector body member with respect to the ’940 Patent, inwardly toward
the post and against the cable jacket, thereby forming the desired seal.
See, e.g., ’194 Patent 7:31-63; ’940 Patent 7:31-7:63.
Once again, Corning Gilbert unnecessarily imports language found
elsewhere in the patent claims into its proposed definitions. For example,
while Corning Gilbert argues that the compression ring of the ’194 Patent
36

must contain an inwardly tapered annular wall, element (d) of Claim 1 of
the patent provides for a compression ring “including an inwardly tapered
annular wall. . .”, rendering the language proposed by Corning Gilbert
redundant for purposes of that claim. See ’194 Patent 13:55-57. There is
no support for importing this limitation into the term “compression ring.”
And, as PPC notes, in element (d) of the ’194 Patent and element (c) of
the ’940 Patent it is the central passageway of the compression ring that
includes the inwardly tapered annular wall, although the ’940 Patent goes
on to specify that it contains a central passageway that is dimensioned to
compress the connector body radially inward causing the desired
deformation toward the post and against the outer jacket of the coaxial
cable in order to effectuate the requisite seal. See ‘940 Patent 13:5214:2.
It should also be noted that the ’940 Patent describes a fastener
member that does not necessarily require an inwardly tapered annular
wall. No indication appears in the specification for the ’940 Patent that
would limit the manner which the desired compression is accomplished to
inwardly tapered annular walls, as distinct with other dimensioning which

37

could serve the same purpose.7
Having considered the parties’ counterproposed definitions, I
recommend that the term “a compression ring” as utilized in the ’194
Patent, be defined as the “structure of a connector that deforms the rear
end portion of the cylindrical sleeve inwardly toward the tubular post when
slid axially over the cylindrical body member.” I also recommend that a
“fastener member” be defined, for purposes of the ’940 Patent, as “the
structure of the connector that deforms the connector body member
inwardly toward the post when slid over the connector body member.”
7. “Commensurate”
The parties next request construction of the unassuming term
“commensurate”, which appears only in the ’194 Patent. The parties have
proposed the following definitions for this term:
Claim Term
commensurate
(’194 Patent)

PPC’s Construction
Of corresponding extent,
magnitude, or degree;
proportionate, adequate.

Corning Gilbert’s Construction
Of corresponding extent,
magnitude, or degree;
proportionate.

To place the parties’ disagreement over this term in context, I note

7

I note that the ’940 Patent claims a connector body member and not a
cylindrical body member. Yet the proposed Corning Gilbert construction for the term
“fastener member” references a cylindrical body member.
38

that two of the claims of the ’194 Patent disclose a first end of the
compression ring with a first non-tapered internal bore “of a diameter
commensurate with the first diameter of the outer wall of said cylindrical
sleeve”. ’194 Patent, 13:50-53, 14:39-42. During prosecution of the ’194
Patent the inventor explained to the PTO examiner that “[t]he first end 56
of the compression ring 28 has a first internal bore 62 of a diameter
commensurate with the first predetermined diameter (Fig. 3, ‘d’) of the
outer wall of the cylindrical sleeve,” therefore signaling an intent to
disclose a relationship between the diameter of the first internal bore and
the diameter of the outer wall of the cylindrical sleeve. See Stein Decl.
(Dkt. No. 36-1) Exh. 4 (9/11/00 Preliminary Amendment) at p. 12.
This term was construed, in the context of the ’194 Patent, during
prior litigation between those same parties. See John Mezzalingua
Assoc., Inc., v. Corning Gilbert, Inc., Civil Action No. 03-CV-354-S
(W.D.Wis.); see also Nash Decl. (Dkt. No. 34-2) Exh. J. The parties
disagree over whether the construction of District Judge Shabaz in that
case of the term “commensurate” included the word “adequate”, a term
which PPC argues should be contained within this court’s construction. In
his decision, Judge Shabaz plainly settled on the second of the two

39

common dictionary definitions of the term “commensurate”, defining it to
mean “[o]f corresponding extent, magnitude, or degree; proportionate,
adequate.” See id. at pp. 5-6.
While tending to agree with Corning Gilbert that term “adequate”
does not seem to capture the intended meaning, I feel compelled to
recommend that this court follow that definition. Since the Wisconsin
action involved the same parties and patent, the court’s decision in that
action would appear to merit preclusive effect.8 See Taylor v. Sturgell,
553 U.S. 880, 128 S. Ct. 2161 (2008).
Moreover, even if that action involved an accused infringer other
than Corning Gilbert, but the same patent, stare decisis, which teaches
that determinations involving the same legal question presented under

8

Two doctrines encompassed within the principle of “res judicata”, claim
preclusion and issue preclusion, Taylor, 553 U.S. at 892, 128 S. Ct. at 2171, protect
against “the expense and vexation attending multiple lawsuits, conserve judicial
resources, and foster reliance on judicial action by minimizing the possibility of
inconsistent decisions” while precluding parties from bringing claims they have already
had a full and fair opportunity to litigate. Montana v. United States, 440 U.S. 147,
153-54, 99 S. Ct. 970, 973-74 (1979). Res judicata, or “claim preclusion generally
prevents litigation of any ground that could have been advanced in the earlier suit in
support of the claim… made there…”. USM Corp. v. SPS Techs., Inc., 694 F.2d 505,
508 (7th Cir.1982), cert. denied, 462 U.S. 1107, 103 S. Ct. 2455 (1983). Issue
preclusion, a more narrow doctrine often referred to as collateral estoppel, bars a party
that has had a full and fair opportunity to litigate an issue of fact or law from relitigating
the same issue once it has been decided against that party or its privy. McKithen v.
Brown, 481 F.3d 89, 105 (2d Cir. 2007).
40

similar circumstances should not ordinarily be reconsidered, absent
manifest unfairness, would seemingly dictate that Judge Shabaz’s
construction control. See Texas Instruments, Inc. v. Linear Techs. Corp.,
182 F. Supp. 2d 580, 589 (E.D. Tex. 2002). Indeed, stare decisis plays an
important role the patent claim construction calculus, given the
“importance of uniformity in the treatment of a given patent.” Markman,
517 U.S. at 390, 116 S. Ct. at 1396. As one of the reasons offered in
support of its decision to relegate claim construction to the courts, as a
matter of law, in Markman the Supreme Court observed that the policy of
uniformity would be furthered by its prescribed approach, noting that
“treating interpretive issues as purely legal will promote (though it will not
guarantee) intrajurisdictional certainty through the application of stare
decisis on those questions not yet subject to interjurisdictional uniformity
under the authority of the single appeals court.” Id. at 391, 116 S. Ct. at
1396.
Accordingly, I recommend that the term “commensurate” be defined
to mean: “of corresponding extent, magnitude, or degree; proportionate,
adequate.”
8. A Central Passageway

41

A term common to both the ’194 and ’940 Patents for which the
parties now request guidance is “a central passageway”. The parties offer
the following proposed definitions for that term.
Claim Term
a central passageway
(’194 and ’940 Patent)

PPC’s Construction
No construction required. To
the extent construction is
required:

Corning Gilbert’s Construction
A cavity in the connector
defined by the inner portion of
the compression ring/fastener
member.

‘194 Patent: A passageway
extending between the first
and second ends of the
compression ring.
‘940 Patent: A passageway
defined between the first and
second ends of the fastener
member.

The term “a central passageway” is found in the portions of claims 1
and 2 of the ’194 Patent and Claim 1 of the ’940 Patent describing the
compression ring or fastener member, terms used synonymously in the
two patents. See ’194 Patent 13:48-58 and 14:37-49; ’940 Patent 13:5214:2. The central passageway at issue is perhaps best depicted in Figure
4 of the ’194 Patent, as follows:

42

’194 Patent, Figure 4 shows the fastener member or compression ring
described in ’194 Patent, 28 with a first opening 56 and a second opening
58 defining a second cavity, or a central passageway 60 between the two
ends. ’194 Patent 7:34-7:40. A similar passageway is reflected in the
’940 Patent on the inside of the fastener member. See ’940 Patent 7:317:61.

43

The term central passageway does not appear to be controversial
and should be readily susceptible of interpretation by a jury. The purpose
of the passageway, which is tapered in various of the embodiments
reflected, is to perform, through the use of tapered dimensions, the
deforming process resulting in the desired seal. In order to provide clarity,
however, I recommend that the term be interpreted as “a cavity in the
center of the compression ring (’194 Patent) or fastener member (’940
Patent) extending between the first and second ends thereof.”
9. “Said Inwardly Tapered Annular Wall Causing Said Rear
End Portion of Said Cylindrical Sleeve to be Deformed
Inwardly”
Element (e) of Claims 1 and 2 of the ’194 Patent describes an
inwardly tapered annular wall causing said rear
end portion of said cylindrical sleeve to be
deformed inwardly toward said tubular post and
against the jacket of the coaxial cable as said
compression ring is advanced axially over the
cylindrical body member toward the second end of
said cylindrical body member.
’194 Patent 14:1-8, 14:51-57. The parties have requested construction of
this claim term, and offer the following proposed definitions:
Claim Term

PPC’s Construction

44

Corning Gilbert’s Construction

said inwardly tapered
annular wall causing
said rear end portion of
said cylindrical sleeve to
be deformed inwardly
(‘194 Patent)

No construction required. To
the extent construction is
required:
An inwardly tapered wall in the
compression ring that causes
the rear end portion of the
cylindrical sleeve to deform
inwardly toward the tubular
post when the compression
ring is slid axially over the
cylindrical body member.

As the inwardly tapered annular
wall advances axially over the
cylindrical sleeve, the cylindrical
sleeve is deformed inwardly in a
uniform fashion commensurate
with the inward taper in the wall
of the compression ring.

Like several others in dispute, this claim term consists of commonly
understood words, describing the action of the deformation that occurs
through movement of the compression ring onto the connector’s
cylindrical body member, based upon the tapering of its annular wall. As
such, it does not appear to require further refinement.
Corning Gilbert offers a construction of this claim term which is
flawed in at least two respects. First, without any support from the patent
specification or prosecution history, Corning Gilbert interjects the
requirement that the deformation occur “in a uniform fashion
commensurate with the inward taper of the wall of the compression ring”.
While it may be entirely true that it is the inward taper of the compression
wall that causes deformation, nowhere is it specified that the deformation
must occur uniformly. Secondly, the Corning Gilbert construction states
that the deformation occurs as the inwardly tapered annular wall advances
45

axially over the cylindrical sleeve. The express terms of the claims
containing the disputed term, however, provide that deformation occurs as
the compression ring is advanced axially over the cylindrical body
member, and not the cylindrical sleeve as propounded by Corning Gilbert.
While Corning Gilbert contends that there is no support from the intrinsic
evidence that the claims cover irregular deformation, proper focus should
be upon whether the intrinsic evidences reflects an intent on the part of
the inventor to surrender the full scope of the claim and eschew an
intention to protect his invention where irregular deformation occurs.9
IV.

SUMMARY AND RECOMMENDATION
The two patents in suit involve relatively simple concepts, products,

and methods described in terms most of which are readily understandable
without the need for technical or expert assistance or further refinement.
The efforts on the part of the parties to entice the court into limiting those
terms, including by incorporating limitations found elsewhere in the patent
claims, unavailing, given the absence of any indication that the patentee
intended to act as his own lexicographer and to disavow the full scope of
9

One could perhaps argue that an irregular deformation could potentially
undermine 360E seal touted in the ’194 and ’940 patents as one of the major features
of the connectors disclosed. It is conceivable, however, that the deformation could
occur in an irregular fashion, yet in the end produce a regular, airtight seal.
46

the ordinary meanings of those terms. Having carefully considered the
patents in suit, the arguments of the parties, and the relevant and
available intrinsic evidence, and other data informing the court’s analysis,
it is hereby respectfully
RECOMMENDED that the court affix the following meanings to the
patent claim terms in dispute:
Disputed Term

Proposed Construction

Cylindrical Body Member

No Construction Necessary

First End

No Construction Necessary

Cylindrical Sleeve

No Construction Necessary

First Central Bore

“A cavity lying between the inner
wall of the cylindrical sleeve (’194
Patent) or connector body (’940
Patent) and the tubular post (’194
Patent) or the post (’940 Patent)”

Compression Ring

“structure of a connector that
deforms the rear end portion of
the cylindrical sleeve inwardly
toward the tubular post when slid
axially over the cylindrical body
member”

Central Passageway

“a cavity in the center of the
compression ring (’194 Patent) or
fastener member (’940 Patent)
extending between the first and
47

second ends thereof.”
Commensurate

mean “of corresponding extent,
magnitude, or degree;
proportionate, adequate.”

Said Inwardly Tapered Annular
No Construction Necessary
Wall Causing Said Rear End
Portion of Said Cylindrical Sleeve
to be Deformed Inwardly
Connector Body Member

No Construction Necessary

Fastener Member

“the structure of the connector
that deforms the connector body
member inwardly toward the post
when slid over the connector
body member”

Dated:

September 5, 2012
Syracuse, NY

48