Royal Appliance Manufacturing Co. et al v. Fellowes, Inc.

Filing 69

Memorandum Opinion and Order Adopting 61 Report and Recommendation w/modifications. Status Conference set for 1/14/2013 at 10:00 AM. Judge Donald C. Nugent (C,KA)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION

ROYAL APPLIANCE ,
MANUFACTURING CO., et al.,
Plaintiffs,
v.

FELLOWES, INC.,
Defendant.

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CASE NO. 1: 10 CV 2604

JUDGE DONALD C. NUGENT
MEMORANDUM OPINION
AND ORDER

This matter comes before the Court upon the Report and Recommendation of Magistrate
Judge Nancy A. Vecchiarelli. The Report and Recommendation (Document # 61), issued on
October 2, 2012, is ADOPTED by this Court with the modifications set forth below. Plaintiffs filed
this action seeking declaratory relief that their products do not infringe United States Patent Nos.
7,963,468 (“the ‘468 Patent”), and 8,020,796 (“the ‘796 Patent”), both of which are held by
Fellowes, Inc. (“Fellowes”). Magistrate Judge Vecchiarelli held a claim construction hearing and
issued the following recommendation regarding the construction of the disputed terms.
1.

Disputed term 1: said thickness detector is provided in the form of an
elongate arm (claims 1, 5); recommended construction: said thickness
detector is provided in the form of an arm extending from the feed

aperture to a switch or a device for detecting movement of the arm (pp.
16-17).
2.

Disputed term 2: an elongate arm mounted for pivotal movement (claims
1, 5); recommended construction: an elongated arm attached in a
manner to allow rotation around a fixed point (pp. 17-18).

3.

Disputed term 3: the thickness detector permits energization of the
cutting mechanism (claims 1, 5, 9, 13, 14); recommended construction:
the thickness detector permits the flow of electricity to the cutting
mechanism (p. 24).

4.

Disputed term 4: the thickness detector prevents energization of the
cutting mechanism (claims 1, 5, 9, 13, 14); recommended construction:
the thickness detector prevents the flow of electricity to the cutting
mechanism (p. 24).

5.

Disputed term 5: the controller is configured to prevent the starting of
energization of the cutting mechanism (claims 9, 11); recommended
construction: the controller is configured to prevent the flow of electricity
to the cutting mechanism (pp. 24-25).

6.

Disputed terms 6: “the controller is configured to start energization of the
cutting mechanism” and “said controller being configured to . . . permit
energization of the cutting mechanism” (claims 9, 11); recommended
constructions: “the controller is configured to send electricity to the
cutting mechanism” and “the controller is configured to permit the flow of

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electricity to the cutting mechanism” (p. 25).
7.

Disputed term 7: movement of said part in the feed-aperture amplifies
movement of the detectable element at the sensor (claims 10, 12, 13, 14);
recommended construction: movement of the portion of the thickness
detector in the feed-aperture results in increased movement of the
detectable element at the sensor (pp. 18-19).

8.

Disputed term 8: pivot axis (claims 2, 3, 4, 6, 7, 8); recommended
construction: no construction necessary or, alternatively, “fixed point
around which rotation occurs” (pp. 19).

9.

Disputed term 9: substantially adjacent to the feed-aperture (claims 3,
7); recommended construction: close to, next to, or beside the feed
aperture, but not in the feed-aperture (pp. 19-20).

10.

Disputed term 10: feed-aperture (claims 1, 2, 3, 5, 6, 7, 9, 10, 11, 12,
13); recommended construction: the throat, namely the entire space
through which materials being shredded are fed into the cutter elements
[by agreement of the parties].

11.

Disputed term 11: wherein part of the thickness detector extends into the
feed-aperture (claims 1, 5, 9, 13; also claim 11 states “the thickness
detector having a part extending into the feed-aperture”); recommended
construction: no construction necessary (p. 18).

12.

Disputed term 12: in response to (claims 9, 11); recommended
construction: no construction necessary or, alternatively, “as a result

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of” (pp. 25-26).
13.

Disputed term 13: being configured to cause a break in the circuit
(claims 2, 6); recommended construction: no construction necessary
(p. 26).

Recommended constructions in construing the disputed terms in the ‘796 patent:
1.

Disputed term 1: [the controller being configured to determine whether
the thickness detector detects that the thickness of the at least one article
to be shredded being received by the throat is] below or at or above [a
predetermined maximum thickness threshold], and [determining whether the
thickness detector detects that the thickness of the at least one article to be
shredded being received by the throat is] below or at or above [a predetermined
maximum thickness threshold] (claims 1, 21); recommended construction:
either (1) less than or, alternatively, (2) greater than or equal to (claims 1, 21) (pp.
27-30).

2.

Disputed term 2: detects (claims 1,21); recommended construction:
no construction necessary (pp. 31-36).

3.

Disputed term 3: without preventing the operation of the motor in the
shredding direction in response to the thickness detector detecting during
the operation of the motor that the thickness of the at least one article is at
or above the predetermined maximum thickness threshold to thereby
prevent unnecessary motor shut-off due to flutter of the at least one article
being shredded (claims 1, 21); recommended construction: without

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stopping or interrupting the operation of the motor in the shredding
direction in response to the thickness detector detecting during the
operation of the motor that the thickness of the at least one article is at or
above the predetermined maximum thickness threshold to thereby prevent
unnecessary motor shut-off due to flutter of the at least one article being
shredded (pp. 36-38).
4.

Disputed term 4: predetermined maximum thickness threshold (claims 1,
21); recommended construction: no construction necessary (pp. 3839).

5.

Disputed term 5: fluttering (claims 1, 21); recommended construction:
waving, bending, flapping, or other similar movement (pp. 39-40).

6.

Disputed term 6: motor operating condition (claims 18, 31);
recommended construction: status of the motor’s operation, for
example, the temperature of the motor, the current flowing through the
motor, or the like (pp. 40-41).

The Parties filed objections to the Report and Recommendation (ECF # 63, 64), and this
Court permitted them to also file Responses to the opposition’s Objections. (ECF #67, 68).
Plaintiffs filed an Objection to Magistrate Vecchiarelli’s construction of Term 3 in Patent ‘796.
Fellowes objected to the recommended construction of Terms 1, and 3 through 6 of the ‘468
Patent. The Court has reviewed de novo the Report and Recommendation, see Ohio Citizen
Action v. City of Seven Hills, 35 F. Supp. 2d 575, 577 (N.D. Ohio 1999), and ADOPTS the
Report and Recommendation with the noted minor modifications.

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CONSTRUCTION OF ‘796 PATENT: TERM 3 (CLAIMS 1 AND 21).
With regard to Term 3 of the ‘796 Patent, Plaintiffs ask that the Court modify the
construction recommended by the Magistrate and adopt their construction of this term. Patent
‘796 addresses an improvement to prior anti-jamming technology contained in shredders that are
described by the ‘468 Patent. The Report and Recommendation accurately sets forth both the
language of the patent claim and the other relevant information, including the patent
specifications and product descriptions. The dispute centers around the following terminology
contained in Claims 1 and 21 of the ‘796 Patent: “without preventing the operation of the motor
in the shredding direction in response to the thickness detector detecting during the operation of
the motor that the thickness of the at least one article is at or above the predetermined maximum
thickness threshold to thereby prevent unnecessary motor shut-off due to flutter of the at least
one article.” Plaintiffs believe that this language should be construed to mean “without stopping
the motor when it is determined that fluttering has caused the thickness detector to detect at least
one article is at or above the predetermined maximum thickness threshold.”
Magistrate Vecchiarelli found based on the arguments of the parties, the evidence
presented at the claim construction hearing, and a very thorough review of the Patent itself, that
this interpretation includes a limitation that conflicts with the clear language of the patent, and is
not supported by the other evidence. The patent language contains no requirement that the
shredder “determine that fluttering has caused” the thickness detector to register that the items
being shredded exceed the maximum thickness threshold. Rather, it merely instructs that the
invention will not prevent operation of the shredding mechanism if the maximum thickness
threshold is not exceeded at the beginning of the shredding process, even if that threshold may

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be exceeded during the shredding process. This is meant to avoid unnecessary motor shut-off
due to “fluttering” (i.e. the bending, waving, flapping, or other movement of the article being
shredded), which may temporarily and falsely indicate an increase the thickness of the articles
entering the shredding mechanism. The patent language, as supported by the prosecution history
and the totality of the information contained in the specifications, does not limit the invention to
one which prevents shut-off only after the machine “determines” by some sensor or other
predetermined setting or measure, that the sensed increase in thickness is actually caused by
fluttering. Rather, although the invention is aimed at preventing unnecessary shut-off due to
fluttering, it includes a less precise, or over inclusive method of preventing an unnecessary shutoff, which would result in a continuation of shredding even if the perceived increase in thickness
during the shredding process had some other cause. Although both parties seem to agree that the
patent reaches inventions that include a more precise indication that increased thickness is
caused by fluttering (for example via a pre-programmed flutter thickness setting), neither asked
that the term be constructed to specify this as an alternative means of determining when the
motor will be triggered to shut-off. Plaintiffs sought to limit, rather than expand the language of
the patent term to exclude inventions that do not have a pre-programmed flutter thickness setting
or other means of determining the cause of any perceived increase in the thickness of an article
being shredded. The patent language and other relevant information simply do not support such
a limitation. Magistrate Vecchiarelli’s construction of the term is, therefore, accurate and the
reasoning she provides for her construction is well supported and well reasoned.

CONSTRUCTION OF ‘486 PATENT, TERMS 1 AND 3-6 (CLAIMS 1,5,9, 11, 13, 14)

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Defendant Fellowes objects to the recommended construction of Term 1, and Terms 3-6
of the ‘486 Patent.

With regard to Term 1, Fellowes argues not over the description of the

arm’s shape, although both parties suggested descriptive terms which differed from the shapes
disclosed in the drawings. Rather, Fellowes seeks to change the term from “the thickness
detector is provided in the form of an elongate arm,” to “the thickness detector includes a slender
arm.” Magistrate Vecchiarelli addressed the “includes” vs. “in the form of” distinction
thoroughly and persuasively, albeit in a footnote (ECF #61,fn. 1, pg. 16). The patent uses the “in
the form of” language, and although some preferred embodiments show additional components,
not all do. Therefore, the Report and Recommendation is correct to conclude that additional
components are not integral or necessary parts of the thickness detector. Any further argument
as to whether the inclusion of such components sufficiently vary from the patent to avoid
infringement is an issue that can be addressed to the jury. The construction suggested in the
Report and Recommendation is adopted as written.
The parties agree that terms 3-6 of the ‘486 Patent are intertwined and should be
construed consistently. The Report and Recommendation, based on the patent language and
other evidence presented at the hearing, explains that the shredder described in the ‘468 Patent
“includes a thickness detector as an aid to avoid jamming. In various configurations, the
detector may interact with the shredder’s motor, a controller, a sensor, and light or sound
displays to warn of or stop possible jams.” It also goes on to say that the “thickness detector,
and sometimes a sensor, send signals to a controller. If the thickness detector signals that
predetermined thickness levels are not being exceeded and if the sensor, if any, signals that one
or more items are in the feed aperture, the controller ‘starts energization’ of the shredder

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mechanism. However, both the thickness detector and the sensor, if any, have a veto over the
operation of the shredder mechanism. If either device signals that conditions do not support
operation . . . then the shredder mechanism is prevented from operating because ‘the controller is
configured to prevent the starting of energization of the cutting mechanism.’”
Fellowes argues that the construction of the “permits/prevents” language in terms three
through six includes an invention where the thickness detector either “directly or indirectly”
permits/prevents energization of the shredding mechanism because the patent describes a
product wherein the detector signals the controller to shut off the motor driving the shredding
mechanism if the maximum thickness threshold is exceeded. Fellowes also argues that Term 13
should be considered and constructed in a manner that is consistent with the direct/indirect
explanation. Plaintiffs, on the other hand, seek to argue that any invention in which the
controller, rather than the thickness detector, prevents or permits energization, does not violate
the ‘468 Patent.
The patent language, and the Magistrate’s summary of all of the evidence and
information before it indicates that this patent includes products in which the thickness detector
“signals” the controller to cut power to the shredding mechanism, as well as products in which
the thickness detector itself moves to interrupt the circuit or impede the flow of electricity to the
shredding mechanism. Therefore, Fellowes’ objections have some merit. The addition of
“direct or indirect” into the language, however, may be a bit too broad considering the other
language and limitations contained in the patent. Further, the terms five and six, relating to the
controller’s influence on the energization of the shredding mechanism are not necessarily
affected by the reasoning supporting the Defendant’s objections. Therefore the terms are to be

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constructed as follows:
3.

Disputed term 3: the thickness detector permits energization of the
cutting mechanism (claims 1, 5, 9, 13, 14); recommended construction:
the thickness detector neither interrupts nor signals the controller to interrupt the flow of
electricity to the cutting mechanism (p. 24).

4.

Disputed term 4: the thickness detector prevents energization of the
cutting mechanism (claims 1, 5, 9, 13, 14); recommended construction:
the thickness detector interrupts or signals the controller to interrupt the flow of
electricity to the cutting mechanism (p. 24).

5.

Disputed term 5: the controller is configured to prevent the starting of
energization of the cutting mechanism (claims 9, 11); recommended
construction: the controller is configured to prevent the flow of electricity
to the cutting mechanism (pp. 24-25).

6.

Disputed terms 6: “the controller is configured to start energization of the
cutting mechanism” and “said controller being configured to . . . permit
energization of the cutting mechanism” (claims 9, 11); recommended
constructions: “the controller is configured to send electricity to the
cutting mechanism” and “the controller is configured to permit the flow of
electricity to the cutting mechanism” (p. 25).
In addition to the objections raised by the parties, Magistrate Vecchiarelli’s Report and

Recommendation in some instances recommended either a possible construction, or a finding of
“no construction necessary” for some of the disputed terms. In such instances, the Court adopts

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the “no construction necessary” option.
For the reasons set forth above, the Court adopts the Report and Recommendation with
the noted minor modifications, finding that the Report was thorough, well reasoned, and
generally correct. The final construction of the disputed terms is as follows:
1.

Disputed term 1: said thickness detector is provided in the form of an
elongate arm (claims 1, 5); recommended construction: said thickness
detector is provided in the form of an arm extending from the feed
aperture to a switch or a device for detecting movement of the arm (pp.
16-17).

2.

Disputed term 2: an elongate arm mounted for pivotal movement (claims
1, 5); recommended construction: an elongated arm attached in a
manner to allow rotation around a fixed point (pp. 17-18).

3.

Disputed term 3: the thickness detector permits energization of the
cutting mechanism (claims 1, 5, 9, 13, 14); recommended construction:
the thickness detector neither interrupts nor signals the controller to interrupt the
flow of electricity to the cutting mechanism (p. 24).

4.

Disputed term 4: the thickness detector prevents energization of the
cutting mechanism (claims 1, 5, 9, 13, 14); recommended construction:
the thickness detector interrupts or signals the controller to interrupt the flow of
electricity to the cutting mechanism (p. 24).

5.

Disputed term 5: the controller is configured to prevent the starting of
energization of the cutting mechanism (claims 9, 11); recommended

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construction: the controller is configured to prevent the flow of electricity
to the cutting mechanism (pp. 24-25).
6.

Disputed terms 6: “the controller is configured to start energization of the
cutting mechanism” and “said controller being configured to . . . permit
energization of the cutting mechanism” (claims 9, 11); recommended
constructions: “the controller is configured to send electricity to the
cutting mechanism” and “the controller is configured to permit the flow of
electricity to the cutting mechanism” (p. 25).

7.

Disputed term 7: movement of said part in the feed-aperture amplifies
movement of the detectable element at the sensor (claims 10, 12, 13, 14);
recommended construction: movement of the portion of the thickness
detector in the feed-aperture results in increased movement of the
detectable element at the sensor (pp. 18-19).

8.

Disputed term 8: pivot axis (claims 2, 3, 4, 6, 7, 8); recommended
construction: no construction necessary (pp. 19).

9.

Disputed term 9: substantially adjacent to the feed-aperture (claims 3,
7); recommended construction: close to, next to, or beside the feed
aperture, but not in the feed-aperture (pp. 19-20).

10.

Disputed term 10: feed-aperture (claims 1, 2, 3, 5, 6, 7, 9, 10, 11, 12,
13); recommended construction: the throat, namely the entire space
through which materials being shredded are fed into the cutter elements
[by agreement of the parties].

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11.

Disputed term 11: wherein part of the thickness detector extends into the
feed-aperture (claims 1, 5, 9, 13; also claim 11 states “the thickness
detector having a part extending into the feed-aperture”); recommended
construction: no construction necessary (p. 18).

12.

Disputed term 12: in response to (claims 9, 11); recommended
construction: no construction necessary (pp. 25-26).

13.

Disputed term 13: being configured to cause a break in the circuit
(claims 2, 6); recommended construction: no construction necessary
(p. 26).

Recommended constructions in construing the disputed terms in the ‘796 patent:
1.

Disputed term 1: [the controller being configured to determine whether the
thickness detector detects that the thickness of the at least one article to be
shredded being received by the throat is] below or at or above [a predetermined
maximum thickness threshold], and [determining whether the thickness detector
detects that the thickness of the at least one article to be shredded being received
by the throat is] below or at or above [a predetermined maximum thickness
threshold] (claims 1, 21); recommended construction: either (1) less than or,
alternatively, (2) greater than or equal to (claims 1, 21) (pp. 27-30).

2.

Disputed term 2: detects (claims 1,21); recommended construction: no
construction necessary (pp. 31-36).

3.

Disputed term 3: without preventing the operation of the motor in the shredding
direction in response to the thickness detector detecting during the operation of

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the motor that the thickness of the at least one article is at or above the
predetermined maximum thickness threshold to thereby prevent unnecessary
motor shut-off due to flutter of the at least one article being shredded (claims 1,
21); recommended construction: without stopping or interrupting the operation
of the motor in the shredding direction in response to the thickness detector
detecting during the operation of the motor that the thickness of the at least one
article is at or above the predetermined maximum thickness threshold to thereby
prevent unnecessary motor shut-off due to flutter of the at least one article being
shredded (pp. 36-38).
4.

Disputed term 4: predetermined maximum thickness threshold (claims 1, 21);
recommended construction: no construction necessary (pp. 38- 39).

5.

Disputed term 5: fluttering (claims 1, 21); recommended construction: waving,
bending, flapping, or other similar movement (pp. 39-40).

6.

Disputed term 6: motor operating condition (claims 18, 31); recommended
construction: status of the motor’s operation, for example, the temperature of the
motor, the current flowing through the motor, or the like (pp. 40-41).

A status conference is set for January 14, 2012 at 10:00 a.m. IT IS SO ORDERED.

/s/ Donald C. Nugent
DONALD C. NUGENT
United States District Judge
DATED: November 19, 2012

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