Edge-Works Manufacturing Company v. HSG, LLC
Filing
94
CLAIM CONSTRUCTION ORDER denying as moot 82 Motion To Exclude Expert Testimony and denying as moot 84 Motion To Exclude Expert Testimony. Pursuant to the case management order, (see DE 61), fact discovery shall be completed by November 15, 2019. Expert discovery closes on March 2, 2020, and dispositive motions are due by April 3, 2020. Signed by District Judge Louise Wood Flanagan on 9/12/2019. (Edwards, S.)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NORTH CAROLINA
SOUTHERN DIVISION
No. 7:17-CV-223-FL
EDGE-WORKS MANUFACTURING
COMPANY,
Plaintiff,
v.
HSG, LLC, a North Carolina limited
liability company, and CTGI, LLC, a North
Carolina limited liability company,
Defendants.
HSG, LLC, a North Carolina limited
liability company, and CTGI, LLC, a North
Carolina limited liability company,
Counter Claimants,
v.
EDGE-WORKS MANUFACTURING
COMPANY,
Counter Defendant.
)
)
)
)
)
)
)
)
)
)
)
)
)
)
CLAIM CONSTRUCTION
ORDER
)
)
)
)
)
)
)
)
)
)
)
)
This matter is before the court for a claim construction order. The parties filed a joint claim
construction statement and claim construction briefs, as well as responses. In addition, motions to
exclude expert testimony were filed both by plaintiff and counter defendant Edge-Works
Manufacturing Company (“Edge-Works” or “plaintiff”) (DE 82) and defendants and counter
claimants HSG, LLC (“HSG”) and CTGI, LLC (“CTGI”) (collectively, “defendants”) (DE 84). In
this posture, the issues raised are ripe for ruling. The court sets forth below its decision on the
parties’ disputed claim terms and denies as moot the parties’ motions to exclude expert testimony.
STATEMENT OF THE CASE
Plaintiff initiated this case by complaint filed November 22, 2017, alleging that defendant
HSG’s variable compression ammunition magazine pouches, known as the Polymer Taco pouches
(“accused products”), infringe upon U.S. Patent No. 9,795,210 (“the ’210 patent”). Plaintiff was
granted this patent in conjunction with the development of its own variable compression ammunition
magazine pouches, known as the Hardshell Scorpion pouches.1
Plaintiff filed emergency motion for temporary restraining order and motion for preliminary
injunction on December 1, 2017, seeking an order prohibiting defendant HSG from further sales of
its accused products. On December 18, 2017, the court denied plaintiff’s emergency motion for
temporary restraining order and directed briefing on plaintiff’s motion for preliminary injunction.
Following briefing, the court denied plaintiff’s motion on January 11, 2018, because plaintiff
failed to demonstrate irreparable harm. In so holding, the court also held plaintiff had forecasted
sufficient evidence to show it will likely prove that defendant’s accused products infringe the ’210
patent and that defendant had failed to raise a substantial question of invalidity, also adopting for
purposes of resolving plaintiff’s motion the definition of “covered” as to “put something on top or
1
Edge-Works and HSG have also been before this court in HSG, LLC v. Edge-Works Manufacturing
Company, et al, 7:17-CV-29-FL, where, in part, HSG asserted claims against Edge-Works for breach of contract and
the covenant of good faith and fair dealing, and HSG, LLC v. Edge-Works Manufacturing Company, 7:18-CV-166,
where HSG asserted claims against Edge-Works for false advertising, unfair or deceptive trade practices, and unfair
competition. In the former case, the court granted in part and denied in part both parties’ motions for summary judgment
on March 11, 2019. Motions regarding costs and attorneys’ fees remain pending. In the latter case, the court granted
Edge-Work’s motion to dismiss on August 8, 2019, dismissing all of HSG’s claims.
2
in front of (something) in order to protect or conceal it.” (DE 32 at 11-13). Case management order
followed on February 21, 2018, providing for the close of discovery to occur on April 1, 2019.
On April 9, 2018, defendant filed motion to stay this case pending the outcome of
reexamination proceedings of the ’210 patent before the Patent and Trademark Office
(“PTO”),which the court granted on April 30, 2018. Following conclusion of the reexamination
proceedings, wherein the PTO confirmed the validity of the ’210 patent, plaintiff filed unopposed
motion to lift stay and amend case management order, which the court granted on November 29,
2018, entering amended case management order on December 18, 2018.
On January 28, 2019, plaintiff filed unopposed motion for leave to file first amended
complaint and stipulation regarding scheduling order, both of which the court allowed, further
amending the case management order to provide for the close of discovery to occur on November
15, 2019. In amended complaint, plaintiff added as defendant Comp-Tac Victory Gear, LLC,
(“Comp-Tac”), an entity that had been acquired by defendant HSG, asserting claims against both
defendants for infringement of both the previously-identified ’210 patent and U.S. Patent No.
9,668,568 (the “’568 patent”). Thereafter, with consent of all parties and by order of the court,
plaintiff filed second amended complaint on March 11, 2019, substituting all references previously
made to Comp-Tac to currently-named defendant CTG1.2
On March 12, 2019, defendant HSG and defendant CTGI filed answers to second amended
complaint, both asserting counterclaims for declaratory judgment of non-infringement of the ’210
and ‘568 patents as well as declaratory judgment of invalidity as to the same patents.
2
An owner of defendant HSG formed defendant CTG1 to purchase the assets of formerly-named
defendant Comp-Tac; as stated above, plaintiff alleges defendant HSG and defendant CTG1 sell products that infringe
the ’210 and ’568 patents. (See Sec. Am. Compl. (DE 70) ¶¶ 24-30; DE 75 ¶¶ 24-30; DE 76 ¶¶ 24-30).
3
As required by the court’s case management order and Local Patent Rule 304.3, the parties
filed a joint claim construction statement on April 10, 2019, setting forth five sets of disputed claim
terms as to the two patents at issue and proposed constructions for those terms.3 The parties filed
opening claim construction briefs and responsive claim construction briefs in May and June, 2019.
Additionally, on June 7, 2019, plaintiff moved to exclude expert testimony of James Cagle
(“Cagle”), an expert retained by defendants, and declaration of Frederick Storms (“Storms”), a
former employee of defendant HSG. On June 14, 2019, defendants likewise moved to exclude
expert testimony of Nanci Stevens (“Stevens”), an expert retained by plaintiff.4
The two patents plaintiff alleges have been infringed are both entitled “expandable carry
pouch with variable compression,” both designate one inventor and applicant, Scott Evans
(“Evans”), and both share identical abstracts, figures, and specifications. (See ’210 patent (DE 70-2);
’568 patent (DE 8-7)). Additionally, both claim priority to a common application, and the claims of
each patent contain similar and repeated phrases.5
3
In the parties’ joint claim construction statement, 17 references are identified for construction, many
of which overlap and build on previous proposed constructions. This order, as well as parties in briefing, group these
references for organizational purposes.
4
Throughout briefing, plaintiff has maintained expert testimony is not needed to construe the claims
at issue, but offered the expert testimony of Stevens following defendants’ retention of Cagle. (See, e.g., DE 80 at 5
(“Edge-Works has consistently maintained that expert testimony is not necessary to construe the simple, non-technical
terms used in the patents at issue.”)).
5
The application resulting in the ’568 patent is the parent application to the application that resulted
in the ’210 patent. Plaintiff has filed Certification of Correction from the PTO which states the application for the ’210
patent is a “Continuation of U.S. Patent Application No. 14/881,081 filed October 12, 2015, now U.S. Patent No.
9,668,568, which claims the benefit of U.S. Provisional Application No. 62/190,025 filed July 8, 2015 and U.S.
Provisional Application No. 62/063,133 filed October 13, 2014.” (See ’210 patent (DE 70-2) at 11; DE 81-2 at 354-55
(“Accordingly, the effective filing date of the ’210 patent is October 13, 2014”); see also DE 32 at 9-11 (court holding
effective filing date for the ’210 patent was October 12, 2015, prior to plaintiff’s submission of the Certification of
Correction)).
4
Plaintiff alleges infringement of independent claims 1 and 7 of the ’210 patent which claims
are included as follows with the disputed terms indicated:
1. An expandable carry pouch defining an interior compartment defined by
a. a front wall with an interior and exterior surface with apertures along a
perimeter of the front wall;
b. a back wall opposed to the front wall with an interior and exterior surface
with apertures along a perimeter of the back wall;
c. a pair of opposing side walls;
d. at least one covered recessed vertical channel molded into the interior
surface of the front or back wall between the apertures along the perimeter
of the front or back wall extending longitudinally along the length of the
front or back wall with openings on opposite ends and molded into the front
wall or back wall; and
e. a top open end;
wherein the front wall and back wall are compressed towards one another using a
binding device weaved or laced through the apertures in the perimeter of the front
and back wall and the recessed vertical channel and the openings of the vertical
channel . . . .
7. An expandable carry pouch defining an interior compartment defined by
a. a front wall with an interior and exterior surface with apertures along a
perimeter of the front wall;
b. a back wall opposed to the front wall with an interior and exterior surface
with apertures along a perimeter of the back wall;
c. a pair of opposing side walls;
d. at least one covered recessed horizontal channel molded into the interior
surface of the front or back wall between the apertures along the perimeter
of the front or back wall extending crosswise along the length of the front or
back wall with openings on opposite ends and molded into the front wall or
back wall; and
e. a top open end;
5
wherein the front wall and back wall are compressed towards one another using a
binding device weaved or laced through the apertures in the perimeter of the front
and back wall and the recessed horizontal channel and the [] openings of the
horizontal channel.
(’210 patent (DE 70-2) col. 4, ll. 28-47; col. 4, l. 64-col. 5, l. 16 (emphasis added)).
As seen above, the ’210 patent provides for an expandable carry pouch with variable
compression that can be used to carry tactical gear and that includes channels into which a “binding
device” is woven for compression purposes. Defendants argue, and plaintiff does not dispute, that
with respect to the channel referenced in claim 1 of the ’210 patent, the following 11 features or
limitations exist: 1) There must be at least one channel; 2) The channel must be vertical; 3) The
channel must be recessed; 4) The recessed channel must also be covered; 5) The channel must also
be molded into the interior surface of the front or back wall; 6) The channel must be molded between
the apertures; 7) The apertures must be along the perimeter of the front or back wall; 8) The channel
must extend longitudinally; 9) The channel must extend the length of the front or back wall; 10) The
channel must have openings on opposite ends; and 11) The channel’s openings must be molded into
the front or back wall. (See DE 81 at 7). Likewise, the same features or limitations exist to the
channel described in claim 7 of the ’210 patent, except that the directions are “horizontal” and
“crosswise,” instead of “vertical” and “longitudinally.” (Id.).
Plaintiff also alleges infringement of independent claim 14 as well as dependent claims 15
and 16 of the ’568 patent, which claims are included as follows with the disputed terms indicated:
14. An expandable carry pouch defining an interior compartment defined by
a. a front wall with a proximal side edge and a bottom edge, a forward panel
segment extending in a substantially perpendicular plane outward from the
proximal side edge of the front wall and a bottom panel segment extending
in a substantially perpendicular plane outward from the bottom edge of the
front wall;
6
b. a back wall opposed to the front wall with a distal side edge and a bottom
edge, a rearward panel segment extending in a substantially perpendicular
plane outward from the distal side edge of the back wall and a bottom panel
segment extending in a substantially perpendicular plane outward from the
bottom edge of the back wall;
c. at least one vertical channel with openings on opposite ends molded into
the front wall or back wall;
d. at least one recessed horizontal channel with openings on opposite ends
molded into the front wall or back wall; and
e. a top open end
wherein the front wall and back wall are compressed towards one another using a
binding device with ends weaved or laced through the openings of the vertical
channel and the openings of the horizontal channel.
15. The pouch of claim 14 wherein the front wall, front wall forward panel segment,
and front wall bottom panel segment comprise a single continuous and rigid
component.
16. The pouch of claim 14 wherein the back wall, back wall rearward panel
segment, and back wall bottom panel segment comprise a single continuous and rigid
component.
(’568 patent (DE 8-7) col. 5, l. 31-col. 6, l. 31 (emphasis added)).6
Both the ’210 and ’568 patents provide for the following figures 1 and 3 as embodiments of
both patents:
6
As indicated above, the parties do not request construction of any terms found in dependant claims
15 and 16 of the ’568 patent; thus the court’s claim construction order focuses on disputed terms found in independent
claim 14 of the ’568 patent as well as those found in independent claims 1 and 7 of the ’210 patent.
7
The first “two paragraphs of section 112 frame the issue of claim interpretation for [the
court].” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citing 35 U.S.C.
§ 112). “The second paragraph requires us to look to the language of the claims to determine what
the applicant regards as his invention.” Id. (internal quotations omitted). “On the other hand, the
first paragraph requires that the specification describe the invention set forth in the claims.” Id.
A third component of a patent for claim construction purposes is the “prosecution history.”
Markman, 52 F.3d at 980. Prosecution history is the “public record” of proceedings in the PTO,
which may include statements by the inventor, or on his behalf, while a patent application is pending
approval. Id.
It is the court’s role in claim construction to “analyze the text of the patent and its associated
public record and apply the established rules of construction, and in that way arrive at the true and
consistent scope of the patent owner’s rights to be given legal effect.” Id. at 979. “It is a bedrock
principle of patent law that the claims of a patent define the invention to which the patentee is
entitled the right to exclude.” Phillips, 415 F.3d at 1312 (internal quotations omitted). Thus, the
goal of claim construction is to determine the meaning of the claims. See id.
“To ascertain the meaning of claims,” the court must consider primarily the “intrinsic
record,” comprised of “the claims, the specification, and the prosecution history.” Markman, 52
F.3d at 979; Phillips, 415 F.3d at 1313. Secondarily, the court may consider “extrinsic evidence”
in the form of expert testimony, technical information, and dictionaries. Id.
1.
Intrinsic Evidence
“[T]he words of a claim are generally given their ordinary and customary meaning.”
Phillips, 415 F.3d at 1312 (internal quotations omitted). In turn, “the ordinary and customary
9
meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the
art in question at the time of the invention.” Id. at 1313. In addition, the claims “must be read in
view of the specification, of which they are a part.” Id. at 1315 (quotations omitted). “[T]he
specification is always highly relevant to the claim construction analysis. Usually, it is dispositive;
it is the single best guide to the meaning of a disputed term.” Id. (internal quotations omitted).
“[A]lthough the specification often describes very specific embodiments of the invention,
[the Federal Circuit has] repeatedly warned against confining the claims to those embodiments.”
Id. at 1323. “Much of the time, upon reading the specification in that context, it will become clear
whether the patentee is setting out specific examples of the invention to accomplish those goals, or
whether the patentee instead intends for the claims and the embodiments in the specification to be
strictly coextensive.” Id.
“[T]he prosecution history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim scope narrower than it would otherwise
be.” Id. at 1317. Nevertheless, the court cannot “rely on the prosecution history to construe the
meaning of the claim to be narrower than it would otherwise be unless a patentee limited or
surrendered claim scope through a clear and unmistakable disavowal.” 3M Innovative Properties
v. Tradegar Corp., 725 F.3d 1315, 1322 (Fed. Cir. 2013).
2.
Extrinsic Evidence
“Although [the Federal Circuit has] emphasized the importance of intrinsic evidence in claim
construction, [the court has] also authorized district courts to rely on extrinsic evidence, which
‘consists of all evidence external to the patent and prosecution history, including expert and inventor
10
testimony, dictionaries, and learned treatises.’” Phillips, 415 F.3d at 1317 (quoting Markman, 52
F.3d at 980).
“[E]xtrinsic evidence in the form of expert testimony can be useful to a court for a variety
of purposes, such as to provide background on the technology at issue, to explain how an invention
works, to ensure that the court’s understanding of the technical aspects of the patent is consistent
with that of a person of skill in the art, or to establish that a particular term in the patent or the prior
art has a particular meaning in the pertinent field.” Id. at 1318. “A trial judge has sole discretion to
decide whether or not [she] needs, or even just desires, an expert’s assistance to understand a patent.
[The Federal Circuit] will not disturb that discretionary decision except in the clearest case.”
Markman, 52 F.3d at 981. “However, conclusory, unsupported assertions by experts as to the
definition of a claim term are not useful to a court.” Phillips, 415 F.3d at 1318.
B.
Analysis
1.
Disputed Terms
The parties dispute five sets of terms, which the court will take up in turn below.
a.
“Covered” in ’210 Patent Claims 1 and 7
The court first addresses the use of “covered” in the context of claims 1 and 7 in the ’210
patent, holding intrinsic evidence sufficient to determine that the definition of “covered” is
“something on top of or in front of (something) in order to protect or conceal it.”
As a threshold matter, the parties agree that a “recessed . . . channel molded into the interior”
means a “passageway formed by indenting the interior surface during the molding process.” (DE
11
79 at 2). Thus, the court is tasked with construing “covered” as to a passageway, or channel, formed
by indenting the interior surface during the molding process.7
The parties necessarily revisit and expand upon arguments made previously in the context
of plaintiff’s motion for preliminary injunction, where the court construed, solely for the purposes
of resolution of that motion, “covered” as to “put something on top or in front of (something) in
order to protect or conceal it.” (DE 32 at 12-13); see Sofamor Danek Group, Inc. v. DePuy–Motech,
Inc., 74 F.3d 1216, 1221 (Fed. Cir.1996) (holding court may make the determination of likelihood
of success on the merits in the context of a preliminary injunction determination based on a tentative
claims construction and “exercise its discretion to interpret the claims at a time when the parties
have presented a full picture of the claimed invention and prior art”).
Here, the court exercises its discretion to interpret this claim following more thorough
discovery and briefing on this issue, but the court’s conclusion as to the construction of “covered”
remains the same, to put or “to have something on top of or in front of (something) in order to
protect or conceal it.” The court therefore rejects defendants’ construction requiring “covered,”
when applied to the relevant sections of the claims, to mean “having a cover or lid to enclose a . .
. passage.” The court’s construction is supported by the plain language of the patent, the
specification, and, to a limited extent, the prosecution history.
First, the plain language of the claims at issue requires the “expandable carry pouch” that is
the subject of the ’210 patent to include a channel, one which is identified as vertical in claim 1 and
as horizontal in claim 7, and that those channels be “covered,” “recessed,” and “molded into the
7
Throughout the claim construction order, the court will employ the word “channel” consistent with
the patents at issue. However, the court construes the word “channel” consistent with the parties’ agreed-upon definition
of “passageway,” as seen at the end of this order where the court includes a chart addressing the 17 words, terms, and
phrases that are in dispute based on the court’s construal of the 5 sets of terms addressed specifically herein.
12
interior surface.” Nothing in the plain language supports defendant’s suggested language further
requiring a cover or lid that encloses the channel.
Turning to the specification, no mention is made specifically as to the word “cover.”
However, the specification directs that the vertical and horizontal channels in part “offer protection
to the binding device 90 from internal and external forces” and “enhance the correct placement of
the binding device 90” within the channel. (’210 patent (DE 70-2) col. 3, ll. 31-36). Thus, the
binding device is not enclosed, but directed into the channel for protection.
The figures provided in the patent confirm this understanding. The channels are identified
in figures 1 and 3 above as 70 and 80. (See also ’210 patent (DE 70-2) col. 3, ll. 31-32 (“The
vertical channels 70 and at least one horizontal channel 80 aid in retaining the binding device 90 .
. . .”). The channels are covered when viewed from the outside of the pouch in that the channels
have something on top of them, protecting and concealing the channel. All figures included in the
patent, including figure 2 reproduced below, are consistent with plaintiff’s, not defendants’,
proposed construction in that no figure includes an enclosed channel.8
8
Defendants do not address how the figures as found in the ’210 patent are consistent with defendants’
proposed construction of “covered,” but do move, in the alternative, as follows: “if the Court were to find now that the
claim language cannot be reconciled with the patent figures and that the construction could result in multiple meanings
for the claim terms, the patent language should be found indefinitie and unprotectable.” (DE 87 at 8). The court declines
to grant this relief where the court holds the intrinsic evidence sufficient to allow the court to construe the term
“covered.”
13
The prosecution history also support plaintiff’s construction, albeit to a limited extent.
Plaintiff filed the ‘210 application9 as a continuation of the ‘568 application,10 and added the term
“covered” to claims 1 and 7 to overcome prior art, specifically U.S. Patent No. 3,053,005 (“Byers
patent”), (see DE 8-8), which has a channel with openings on opposite ends wherein the channel for
the binding cord was not covered and was visible from the exterior:
9
For ease of reference, each application is cited by reference to its eventual patent number. U.S.
Application No. 15/611,922, on which the ‘210 patent issued, is cited as the ‘210 application, which application can be
found at docket entry 8-8.
10
U.S. Application No. 14/881,081, on which the ‘568 patent issued, is cited as the ‘568 application,
which application can be found at docket entry 8-6.
14
(Byers patent (DE 81-3)).
On June 29, 2017, the examiner issued his first non-final office action where he stated as
follows:
In particular, it is unclear what structure is defined by the term “covered” as it relates
to the channel. As disclosed in the drawings and specification, there does not appear
to be any structure that actually covers either of the channels 70 and 80. In contrast,
the drawings show the each of the channels 70 and 80 are readily seen and identified
on each of the front and back walls and even further are actually accessible by the
15
apertures located therein. There is nothing disclosed that distinguishes a channel
from a covered channel and therefore the claims are indefinite.
(DE 30-9 at 6).
Following this action and subsequent examiner interview, independent claims 1 and 7 were
amended to add the additional requirements: 1) the channel also be “recessed,” 2) the channel also
be “molded into the interior surface of the front or back wall,” and 3) the channel also be “between
the apertures along the perimeter of the front or back wall.” (DE 30-10 at 2-3 (“Applicant has
amended the claims to overcome the rejection in accordance with discussion during the Examiner
interview of Aug. 16, 2017 and follow up phone discussion on Aug. 24, 2017. As discussed, the
channel is formed by a recessed area in the interior surface of the front and/or back walls.”); DE
30-11). The examiner then withdrew his rejections and the claims, as revised, were allowed. The
’210 patent was issued on October 24, 2017.
Plaintiff argues that these “amendments impart significant meaning as to the scope of the
claimed channels,” with the first amendment to include the word “covered” to avoid the Byers patent
and additional amendment, to include the phrase “recessed . . . molded into the interior,” to “clarify
the precise manner in which these channels are covered.” (DE 86 at 6-7). Plaintiff argues that
following these amendments, “the metes and bounds by which the channel was being covered for
purposes of the invention were clearly defined and accepted by the examiner.” (Id. at 7).
The prosecution history does not lend the amount of support plaintiff urges. However, the
prosecution history does indicate that “covered” was added to avoid the Byers patent, the examiner
did not find the channels to be covered, but following the addition, in part, of “recessed . . . molded
into the interior,” apparently the examiner’s concerns were allayed, although no rationale was
provided.
16
Defendants argue in opposition, similar to the concerns expressed, and then allayed, by the
examiner above, that “covered recessed . . . channel” is different from “recessed . . . channel,” and
plaintiff’s proposed construction “does not add a limitation to the already recessed channel” and
“instead the molding of the channel itself acts as and creates its own cover,” “violating principles
of claim construction” by rendering the word “covered” superfluous. (DE 81 at 18); see also Atlas
IP, LLC v. Medtronic, Inc., 809 F.3d 599, 607 (Fed. Cir. 2015) (explaining the doctrine of claim
differentiation “counsels against constructions that render some claim language superfluous”).
To a certain extent, defendants are correct, in that plaintiff’s proposed construction of the
word “covered,” which the court adopts, “teaches that the recessed portion not only forms the
channel, but also serves as the barrier that protects, conceals, and ‘covers’ the channel.” (DE 80 at
15). However, even though the channel is recessed, when looking at interior of the pouch, and
covered, when looking at the exterior of the pouch, and also created by the molding of the interior
of the pouch,11 this does not render “covered” superfluous, where “covered” describes protection
afforded the binding device consistent with the specification, and “recessed . . . molded into the
interior” describes the location of the channel. (See ’210 patent (DE 70-2) col. 3, ll. 31-36
(providing that the vertical and horizontal channels in part “offer protection to the binding device
90 from internal and external forces” and “enhance the correct placement of the binding device 90”
within the channel)).12
11
Defendants argue the claims should be construed solely from the vantage point of the interior of the
pouch, further arguing that from the interior the channel is recessed but not covered, thus requiring enclosure. (See, e.g.,
DE 81 at 18-19). Although the stacking of adjectives describing the channel, including that it be both recessed and
covered from two different perspectives, is not ideal drafting practice, defendants provide no support, nor is the court
aware of any, that requires construction from a singular perspective.
12
The parties agree that the binding device is protected in the interior. As stated by plaintiff, “[h]aving
the binding cord guided through a channel that is recessed – and therefore removed from the insertion path – is what
protects the cord.” (DE 86 at 7 n.4; see also DE 81 at 19). The court rejects defendants argument that the binding device
17
Although not the most precise formulation, the claims at issue provide for a channel that is
both covered and recessed, and the court construes “covered” in the context of these claims to mean
that which has “something on top of or in front of (something) in order to protect or conceal it.”
b.
“Vertical” and “Horizontal” in ’210 Patent Claims 1 and 7 and
in ’568 Patent Claim 14
Turning to the second set of disputed terms, plaintiff proposes the term “vertical” should be
construed as meaning the channel extends in an “upward direction” and not be limited to “straight
up and down.” Similarly, plaintiff proposes the term “horizontal” should be construed as meaning
“across” as opposed to “straight across from left to right.” Thus, under plaintiff’s proposed
construction, horizontal and vertical channels could be placed on the pouch at multiple angles, as
long as the horizontal channels generally were directed upward on a front or back wall of the pouch
and the vertical channels were generally directed across the front or back wall of the pouch.
The court rejects plaintiff’s proposed constructions. First, it is unclear at what angle the
channels stop being “vertical” and become “horizontal” under this construction. Second, and more
importantly, plaintiff’s proposed constructions do not employ the ordinary and customary meaning
of these terms and find no support in the language of the claims or in the specification, where there
is no indication in either the language of the claims nor in the specification that horizontal or vertical
have any other meaning than the commonly understood meaning of straight across from left to right
or straight up and down. See Lo v. Microsoft Corp., No. CIV.A. 2:07-CV-322, 2009 WL 2960427,
is not protected against the elements outside the pouch because “the cord shoots out of the pouch in at least eight (8)
places from one channel plus more places from other channels, wraps around the pouch, and is generally exposed to the
. . . elements . . . .,” (DE 81 at 19 n.10). Although the binding device is exposed in part, protection is still afforded the
binding device from exterior elements by the molding of the channel. Additionally, defendants’ proposed construction,
adding a “cover” to the channel on the interior of the pouch, would not provide further protection from the elements
outside the pouch.
18
at *5–6 (E.D. Tex. June 11, 2009) (“The Court finds both “vertical” and “upright” are used in the
’733 Patent in accord with their plain and ordinary meanings . . . . the Court construes ‘vertical’ and
‘upright’ to mean ‘straight up, which is 90 degrees from horizontal.’”).
Therefore, the court construes “vertical” to mean “straight up and down” and “horizontal”
to mean “straight across from left to right.” Had the patentee wanted vertical to mean only upward
and horizontal to mean only across, those terms, instead of the more specific terms of vertical and
horizontal, could have been employed, or the patentee could have defined these terms to so mean
within the patent. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)
(“The specification acts as a dictionary when it expressly defines terms used in the claims or when
it defines terms by implication.”).
Plaintiff argues that because the specifications of the patents at issue do not limit
embodiments of the patents to those that are “only rectangular in shape,” this means that vertical and
horizontal do not in fact mean vertical and horizontal, but instead means generally “upward” and
“across.” (See DE 80 at 17; see also ’210 patent (DE 70-2) col. 3, ll. 47-55 (stating a pouch “can
be molded to generic shapes so as to carry any item that may be of similar geometry or they can be
molded to specific shapes so as to carry a specific item” including “radios, flashlights, batons,
handcuffs, flash bangs, hand grenades, batteries, scopes or other aiming devices, or any and all items
as may be considered useful in a tactical situation or environment.”)). However, a pouch need not
be rectangular for channels on that pouch to be straight up and down, or vertical, or straight across
from left to right, or horizontal, even where, as argued by plaintiffs, orientation of the vertical
19
channel may conform to the shape of the embodiment. (See DE 80 at 17).13 There is no indication
in the patent that the channels have or could have any other orientation other than straight up and
down or straight across from left to right.
Likewise, although the vertical orientation of the channel is further described as “extending
longitudinally” and the horizontal channel is further described as “extending crosswise” in the ’210
patent, use of these additional and less specific descriptive terms do not indicate that the original
terms being described, vertical and horizontal, have a different meaning than that which is discussed
above. Thus, the court construes “vertical” to mean “straight up and down” and “horizontal” to
mean “straight across from left to right.”
c.
Length of Channels in ’210 Patent Claims 1 and 7
There is no dispute between the parties that the vertical and horizontal channels must extend
a certain length; however, the parties dispute whether the referenced channels must extend along a
portion of the front or back wall, as submitted by plaintiff, or along the entire length of the front or
back wall, as submitted by defendants.
Turning first to the vertical channel described in claim 1 of the ’210 patent, the claim
language requires this channel to be found “between the apertures along the perimeter of the front
or back wall” and “extending longitudinally along the length of the front or back wall . . . .” (’210
patent (DE 70-2) col. 4, ll. 39-40). Although this language requires the channel to extend “along
the length” of the wall, nothing in this language requires that the vertical channel extend along the
entire length.
13
Although plaintiff seems to argue that there are innumerable shapes the pouches could take, at
minimum, the patents direct that all pouches must have a front wall, a back wall, a pair of opposing side walls, and a top
open end, limiting the number of potential shapes.
20
Additionally, although the figures of the ’210 patent depict several vertical channels,
identified by reference number “70,” that extend the length of the pouch, nothing requires the
channels to extend the full length of the pouch. See Phillips, 415 F.3d at 1323 (“although the
specification often describes very specific embodiments of the invention, [the Federal Circuit has]
repeatedly warned against confining the claims to those embodiments.”).
Defendants do not address the language of the patent nor the specification, except arguing
without support that “[t]he phrase ‘extending longitudinally along the length of the . . . wall’
references the extension of the channel to the top and bottom of the edges of the walls. It has both
continuity and distance.” (DE 81 at 22). However, as already discussed, this phrase indicates where
a channel is to be located, along the length of the wall, and does not require a certain length of
channel.
Defendants do argue, however, that based on the reexamination of the ’201 patent, the PTO
“already implicitly determined” the relevant claim language “meant that the vertical channel must
extend continuously along the length of the wall to nearly the top and bottom,” where the examiner
determined that a prior art reference, the Soldier Systems pictured below, was not invalidating prior
art because this reference did not disclose “covered recessed vertical channels extending
longitudinally along the length of the front or back wall.” (DE 81 at 19-20). Defendants further
argue this is because this reference includes “multiple ‘mini’ channels . . . instead of one continuous
channel extending the length of the wall.” (Id. at 20). Defendants argue that plaintiff “did not object
to the examiner’s determination of the scope of the claim,” and is now bound by the examiner’s
determination. (Id. at 23).
21
Review of the reexamination does not provide the support defendants seek. Although the
examiner did dismiss the Soldier Systems, stating in one sentence that it “does not disclose that the
covered recessed vertical channels extending longitudinally along the length of the front or back
wall, ” (DE 81-2 at 346; see also id. at 327-330, 343-348), no further explanation was provided.
The examiner did not explain that Soldier Systems was rejected because of the supposed “mini
channels” now identified by defendants. The examiner offered no explanation at all.
At best, this provides inconclusive support as how to properly construe the length of the
channels. Without more, such is insufficient for the court to incorporate the limitation defendants
seek, based on the reexamination of the ’210 patent, that the channels at issue should extend the
length of the pouch.14 See Liquid Dynamics Corp. v. Vaughan Co., 355 F.3d 1361, 1368 (Fed. Cir.
2004) (“Because the plain language of the claim was clear and uncontradicted by anything in the
14
That the patentee, Evans, in deposition, drew a continuous red line down the entire length of the front
wall when asked to mark the channel on Figure 1 in the ’210 patent does not counsel for a different result, particularly
where Evans thereafter clarified that “the length” could mean “a portion.” (See DE 86-2 at 4).
22
written description or the figures, the district court should not have relied upon the written
description, the figures, or the prosecution history to add limitations to the claim. Under such
circumstances, relying on the written description and prosecution history to reject the ordinary and
customary meanings of the words themselves is impermissible.”).
Turning to the horizontal channel described in claim 7 of the ’210 patent, the same
conclusion follows, where the claim language requires this channel to be located “between the
apertures along the perimeter of the front or back wall” and “extending crosswise along the length
of the front or back wall,” (’210 patent (DE 70-2) col. 5, ll. 7-9), but there is no requirement that the
channel extend all the way across the front or back wall.15
Thus, the court construes a vertical or horizontal channel that extends longitudinally or
crosswise “along the length of the front or back wall” as extending “along a portion of the front or
back wall.”16
d.
“Apertures” and “Openings” in ’210 Patent Claims 1 and 7
15
Defendants cite Hodak v. Jedco Products, Inc., No. CIV.A 07-CV-0554, 2009 WL 473943 (W.D. Pa.
Feb. 25, 2009), in support of their position. In Hodak, while construing the phrase “peripheral edge extending
therearound,” the court ruled that one of ordinary skill in the art of swimming pool assemblies “would understand that
the claimed device must have an edge extending entirely around the central opening so that a cover element may be
sealingly engaged to prevent pool water from entering the skimmer.” Hodak, 2009 WL 473943, at *6. The court
reached this conclusion on the basis that the device would not function if constructed differently. Here, however, there
is nothing to suggest that a channel must extend the entire length of the front or back wall for the pouch in the ‘210 patent
to work.
16
Similarly, the parties seek the court to construe the length of the channels as found in claim 14 of the
’568 patent, with plaintiff proposing construction that the channels “run[] from one point on the surface to another point,”
(DE 79 at 9-10), and defendants proposing that the channels “run[] from top to bottom of the surface,” (id. at 17-18).
However, unlike the ’210 patent, the ’568 patent does not include the phrase “along the length of the front or back wall”
in any claims, and states only as relevant here that the pouch contains at least one vertical channel and one horizontal
channel, both of which have “openings on opposite ends molded into the front wall or back wall.” (’568 patent (DE 8-7)
col. 4, ll. 52-55). Regarding the ’568 patent, there is no basis for defendants’ proposed language that the channel “run[]
from top to bottom of the surface,” and defendants offer no argument in support. Thus, the court construes the length
of the channels as found in claim 14 of the ’568 patent consistent with plaintiff’s proposed language.
23
In the ’210 patent, each channel is described as existing “between the apertures” and having
“openings on opposite ends.” It is further described that the pouch is compressed by using a binding
device woven through the apertures, the recessed vertical channel, and the ”openings of the . . .
channel.”
Based on this claim language, “apertures” and “openings” are both used to refer to various
openings found on the pouch, some of which are not at the ends of the channels, referred to as
apertures, and some of which are, referred to as openings. See Therasense, Inc. v. Becton,
Dickinson & Co., 593 F.3d 1325, 1329 (Fed. Cir. 2010) (court construing “aperture” to mean
“opening”).
Plaintiff disagrees, arguing that “apertures” and “openings” are used interchangeably in the
patent. However, the claims language differentiates between these two very similar words, as stated
above, based on what opening is being referenced, with apertures used to describe all holes except
those found at the end of the channels, and openings used to describe only the holes found at the end
of channels.17
Thus, the court construes “openings” to be distinct from “apertures,” consistent with
defendants’ proposed definition, which the court discusses more below, in the context of “openings
on opposite ends” versus “openings of the . . . channel.”18
e.
“Openings on Opposite Ends” and “Openings of the . . . Channel” in
’210 Patent Claims 1 and 7 and in ’568 Patent Claim 14
17
Defendants argue that because the word “aperture” does not appear in the claim language that the
parties seek to be construed, the word need not be construed. (See DE 87 at 5). However, because defendants’ proposed
claim language repeatedly includes reference to apertures as distinct from openings, this argument is unavailing. (See,
e.g., DE 79 at 14).
18
Because claim 14 of the ’568 patent only addresses “openings” and not “apertures,” the court need not
differentiate openings from apertures in the context of that patent.
24
As stated above, in the claims of the ’210 patent, each channel is described as existing
“between the apertures” and having “openings on opposite ends.” It is further described that the
pouch is compressed by using a binding device woven through the apertures, the recessed vertical
channel, and the ”openings of the . . . channel.” Similarly, in the ’568 patent, each channel is
described as having “openings on opposite ends,” and the pouch is compressed by using a binding
device woven through “the openings of the vertical channel and the openings of the horizontal
channel.”
There appears no distinction between the use of the word “on” and “of” in this context when
referring to “openings on opposite ends” and “openings of the . . . channel.” See Bancorp Servs.,
L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004) (“Hartford is correct that the
use of both terms in close proximity in the same claim gives rise to an inference that a different
meaning should be assigned to each . . . That inference, however, is not conclusive; it is not
unknown for different words to be used to express similar concepts, even though it may be poor
drafting practice.”); Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
1120 (Fed. Cir. 2004) (“Thus, the context does not show that ‘connected’ and ‘associated’ should
be differentiated into the definitions proposed by Safari, and we must conclude that this is simply
a case where the patentee used different words to express similar concepts, even though it may be
confusing drafting practice”).
Plaintiff agrees, proposing both “of” and “on” to be construed as “on,” with defendants
proposing a more elaborate construction, provided as follows in the context of claim 1 of the ’210
patent:
25
Reference
Phrase
Plaintiff’s Proposed
Construction
Defendants’ Proposed Construction
‘210
Patent
Claim 1
“openings
of the
vertical
channel”
openings on the
ends of each vertical
channel
Openings, which are distinct from
apertures and which originate, or consist
of, the opposite ends of the vertical
channel . . .
‘210
Patent
Claim 1
“openings
on opposite
ends”
openings on
opposite ends of
each vertical
channel
Openings, which are distinct from
apertures, in contact with and supported by
the top surface of opposite ends of the
channels
In support of defendants’ proposed construction, defendants argue their construction gives
meaning to both “of” and “on,” is supported by the dictionary definitions of the terms, and is
consistent with the purpose of the “openings of the vertical channel,” as described by Evans in
deposition, who testified that at the top and bottom origins of the vertical channel, the binding cord
turns ninety degrees, egresses the channel, and can be used to bind a second, stacked pouch, whereas
the holes in the middle of the channel serve no such purpose. (DE 81 at 26-27).
However, as stated above, it is not necessary to construe “of” and “on” differently whereas
here there is no indication the terms should be so construed. See Bancorp, 359 F.3d at 1373;
Innova/Pure Water, 381 F.3d at 1120. Additionally, the distinction defendants seek to make
regarding the purpose of the “openings of the vertical channel,” are encapsulated by distinguishing
“opening” from “aperture,” and therefore distinguishing “of” and “on” is unnecessary.19 Thus the
court construes “of” and “on” as “on,” consistent with plaintiff’s proposed construction.
19
Defendants clarify in their responsive claim construction brief that “an ‘opening of’ the channel
originates and terminates a channel, whereas an ‘opening on’ a channel has molded plastic circumscribing it.” (DE 87
at 4). However, again, such distinction is more simply effectuated by distinguishing “opening” and “aperture.”
26
In sum, based on the above constructions, the disputed terms, phrases, and clauses are
construed as follows:
Reference
Word, Term, or Phrase
Court’s Construction
1
’210 Patent
Claim 1
“Covered”
To have something on top of or in front of
(something) in order to protect or conceal it
2
’210 Patent
Claim 1
“Covered recessed vertical
channel molded into the
interior”
To have something on top of or in front of a
straight up and down passageway that is
formed by indenting the interior surface
during the molding process in order to
protect or conceal the passageway20
3
’210 Patent
Claim 1
“Vertical channel . . .
extending longitudinally
along the length of the
front or back wall”
A straight up and down passageway
extending longitudinally along a portion of
the front or back wall
4
’210 Patent
Claim 1
“Extending longitudinally
along the length of the
front or back wall”
Extending longitudinally along a portion of
the front or back wall
5
’210 Patent
Claim 1
“Recessed vertical
channel”
A straight up and down passageway that is
formed by indenting the interior surface
during the molding process
6
’210 Patent
Claim 1
“Openings of the vertical
channel”
Openings, as distinct from apertures, on the
ends of each vertical passageway
7
’210 Patent
Claim 1
“Openings on opposite
ends”
Openings, as distinct from apertures, on
opposite ends of each vertical passageway
20
The parties propose slightly different but substantively similar language for “molded into the interior”
and related terms, such as “recessed,” with plaintiff proposing the language adopted by the court and defendants
proposing as follows: “by indenting plastic away from the inside surface during the molding process.” (See DE 79 at
12). The court adopts plaintiff’s proposed language where there is no reference made to “plastic” in the claim language
and where the parties have agreed that “recessed . . . channel molded into the interior” means a “passageway formed
by indenting the interior surface during the molding process.” (Id. at 2).
27
8
’201 Patent
Claim 7
“covered recessed
horizontal channel molded
into the interior”
To have something on top of or in front of a
straight across from left to right passageway
that is formed by indenting the interior
surface during the molding process in order
to protect or conceal the passageway
9
’201 Patent
Claim 7
“Horizontal channel . . .
extending crosswise along
the length of the front or
back wall”
A straight across from left to right
passageway extending crosswise along a
portion of the front or back wall
10
’201 Patent
Claim 7
“Recessed horizontal
channel”
A straight across from left to right
passageway formed by indenting the interior
surface during the molding process
11
’201 Patent
Claim 7
“Openings on opposite
ends”
Openings, as distinct from apertures, on
opposite ends of each horizontal passageway
12
’201 Patent
Claim 7
“Openings of the
horizontal channel”
Openings, as distinct from apertures, on the
ends of each horizontal passageway
13
’568 Patent
Claim 14
“Vertical channel”
A straight up and down passageway running
along a portion of the front or back wall
14
’568 Patent
Claim 14
“Horizontal channel”
A straight across from left to right
passageway running along a portion of the
front or back wall
15
’568 Patent
Claim 14
“Vertical channel with
openings on the opposite
ends molded into the front
or back wall”
A straight up and down passageway running
along a portion of the front or back wall with
openings on the opposite ends of that
passageway, where the passageway is
formed during the molding process21
16
’568 Patent
Claim 14
“Recessed horizontal
channel with openings on
opposite ends molded into
the front or back wall”
A straight across from left to right
passageway running along a portion of the
front or back wall with openings on the
opposite ends of that passageway, where the
passageway is formed by indenting the
wall’s surface during the molding process
21
Only the horizontal channel, not the vertical channel, in claim 14 of the ’568 patent is “recessed.”
Thus, the court rejects defendants’ proposed construction for the vertical channel in claim 14 of the ’568 patent that the
channel is made “by indenting plastic.” (See DE 79 at 18).
28
17
’568 Patent
Claim 14
2.
“Openings on opposite
ends”
Openings on the opposite ends of each
vertical or horizontal passageway
Motions to Exclude Expert Testimony
Plaintiff has moved to exclude expert testimony of Cagle, who has provided expert report
concerning the meaning of “covered,” as used in the ’210 patent, (DE 79-2), and Storms, who
provided declaration which also, in part, concerned the meaning of “covered,” (DE 23). Defendants
have likewise moved to exclude expert testimony of Stevens offered by plaintiff, (DE 79-1),
although, as stated above, plaintiff has maintained expert testimony is not needed to construe the
claims at issue, including plaintiff’s own expert, and that plaintiff retained Stevens only in an
abundance of caution after defendants retained Cagle. (See, e.g., DE 80 at 5).
As evidenced by the court’s holding above, expert testimony is not needed to construe the
claims at issue, whereas here, intrinsic evidence is sufficient to construe all disputed terms. See,
e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 n.6 (Fed. Cir. 2014) (“Although the
Defendants point to the testimony of Interval’s expert in support of their argument that the
“unobtrusive manner” phrase is indefinite . . . we find it unnecessary to rely on that testimony (or
any other extrinsic evidence) to reach our conclusion. Like the district court, we find the claims
indefinite based on the claims, the written description, and the prosecution history.”); Phillips
Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866, 870 (Fed. Cir. 1998) (“When the
intrinsic evidence unambiguously delineates the scope of the patent, resort to extrinsic evidence,
including expert testimony, is unnecessary.”). Thus, the parties’ motions to exclude are denied as
moot.
29
CONCLUSION
The court has construed the disputed claim terms as set forth herein. Plaintiff’s motion to
exclude expert testimony (DE 82) is DENIED AS MOOT. Defendants’ motion to exclude expert
testimony (DE 84) is DENIED AS MOOT. Pursuant to the case management order, (see DE 61),
fact discovery shall be completed by November 15, 2019. Expert discovery closes on March 2,
2020, and dispositive motions are due by April 3, 2020.
SO ORDERED, this the 12th day of September, 2019.
_________________________
LOUISE W. FLANAGAN
United States District Judge
30
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?