Burns v. Chrysler Group LLC

Filing 31

Memorandum Opinion and Order For the reasons stated in the Order, the Court makes the following findings: The proper construction for the phrase "outer can having a bore" is "a metal container on the outside of the claimed assem bly that has a hole" and the proper construction for the phrase "inner can" is "a metalcontainer on the inside of the claimed assembly." The Court finds that the remaining terms should be construed according to their ordinary and customary meaning without imposing any limitations or restrictions not specifically includedin the claim language itself. Further explanation is not necessary to aid the Court or the jury in understanding these terms as they are used in the claimed inventions. Signed by Judge Donald C. Nugent on 3/30/2012. (K,K)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF OHIO
EASTERN DIVISION
JAMES M. BURNS, SR.,
Plaintiff,
v.
CHRYSLER GROUP LLC,
Defendant,
and
AMANDA BENT BOLT CO.,
Defendant/Intervenor.

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CASE NO.:

1:11 CV 448

JUDGE DONALD C. NUGENT

MEMORANDUM OPINION
AND ORDER

This matter comes before the Court subsequent to a Claim Construction hearing. The
parties have filed Opening Briefs on claim construction (Docket #s 19 and 20); Reply Briefs
(Docket #s 22 and 23); and, a Joint Claim Construction and Prehearing Statement (Docket #24).
A hearing was held on March 25, 2012. In addition, the Parties submitted Post-Hearing Briefs
(Docket #s 29 and 30). Accordingly, the claim construction issues in the instant matter are now
ripe for determination.
I. BACKGROUND
On March 4, 2011, Plaintiff, James M. Burns, Sr., filed this lawsuit against Defendant,
Chrysler Group LLC, alleging infringement of U.S. Patent No. 7,886,628 (“the 628 Patent”).
The products alleged to infringe the 628 Patent are shift lever assemblies which are installed in

Chrysler vehicles. Shift lever assemblies are parts used in automobiles and trucks with manual
transmissions, for connecting a gear shift lever to the transmission. The products alleged to
infringe the 628 Patent are manufactured for Chrysler by Defendant/Intervenor, the Amanda
Bent Bold Company. Amanda Bent Bolt Company intervened as a co-defendant in this case
pursuant to an agreement between Chrysler and Amanda Bent Bolt.
II. STANDARD OF REVIEW
An infringement analysis entails two steps. The first step is determining the meaning and
scope of the patent claims asserted to be infringed. The second step is comparing the properly
construed claims to the product accused of infringing. See Markman v. Westview Instruments,
Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). It is the first step,
commonly known as claim construction or interpretation, that is at issue at this juncture.
Construction of patent claims is a question of law for the court. See id. at 970-71.
In construing claims, the court should consider first intrinsic evidence of the record: the
patent itself, including the claims, the specification, and, if in evidence, the prosecution history.
See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). This is the most
significant source of the legally operative meaning of disputed claim language. See id. When
analysis of the intrinsic evidence permits unambiguous definition of the meaning and scope of
the claims, as it will in most cases, reference to extrinsic evidence is improper. See id. at 1583.
The Federal Circuit has reaffirmed this principle in Phillips v. AWH Corp., 415 F.3d 1303, 1314
(Fed. Cir. 2005). Although courts can put general or specialized dictionaries and comparable
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extrinsic sources to appropriate use in helping to ascertain the commonly understood meaning of
words, they must give this evidence only the relatively limited weight it is due and not divorce
claim terms from the context of the intrinsic evidence. See id. at 1318-19, 1322-24.
A court’s examination of the intrinsic evidence in a claim construction analysis begins
with the words of the disputed claim itself. See Vitronics Corp., 90 F.3d at 1582. The claims
define the scope of the right to exclude. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1324 (Fed. Cir. 2002) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d
1243, 1248 (Fed. Cir. 1998)). In the absence of a patentee’s “express intent to impart a novel
meaning to the claim terms,” the words of the claims take on the “‘ordinary and customary
meanings attributed to them by those of ordinary skill in the art.’” Mars, Inc. v. H.J. Heinz Co.,
377 F.3d 1369, 1373 (Fed. Cir. 2004) (quoting Int'l Rectifier Corp. v. IXYS Corp., 361 F.3d
1363, 1369 (Fed. Cir. 2004); Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294,
1298 (Fed. Cir. 2003)).
In assessing the meaning of the claim terms, a court must always review the
specification. See Vitronics Corp., 90 F.3d at 1582. The specification is the part of the patent
that “teaches” the invention so that one skilled in the art can make and use it. Amgen, Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed. Cir. 2003). The specification is highly
relevant to claim construction because it may contain special or novel definitions of claim terms
when the patentee has chosen to be his own lexicographer, see Vitronics, 90 F.3d at 1582, or it
may help to resolve ambiguity when the ordinary and customary meaning of a term is not
sufficiently clear, see Teleflex, 299 F.3d at 1325. In sum, the specification is the “‘single best
guide to the meaning of a disputed term,’” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp.,

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90 F.3d at 1582), and is usually “dispositive,” Vitronics Corp., 90 F.3d 1582.
The final source of intrinsic evidence plays a role similar to the specification in the claim
construction analysis. The prosecution history of the patent — the complete record of the
proceedings before the Patent and Trademark Office — “provides evidence of how the PTO and
the inventor understood the patent” and should be considered by the court. Phillips, 415 F.3d at
1317. “The patent applicant’s consistent usage of a term in prosecuting the patent may enlighten
the meaning of that term.” Metabolite Lab., Inc. v. Laboratory Corp. of Am. Holdings, 370 F.3d
1354, 1360 (Fed. Cir. 2004). The prosecution history may contain “express representations
made by the applicant regarding the scope of the claims.” Vitronics Corp., 90 F.3d at 1582. But
any limitation found in the history must be “clear and unmistakable.” Anchor Wall Sys., Inc. v.
Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1307 (Fed. Cir. 2003).
If a claim is amenable to more than one construction, the claim should, when possible, be
construed to preserve its validity. See Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
1384 (Fed. Cir. 2001); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir.
1984). However, the court is not permitted to redraft claims. Quantum Corp. v. Rodime, PLC,
65 F.3d 1577, 1584 (Fed. Cir. 1995).
III. DISCUSSION
In their Joint Claim Construction and Prehearing Statement, the Parties indicate they
have agreed to the following:
a.

The preamble to claim 1 does not require construction and is not a limitation on
the claim.

b.

The proper construction of “coaxial” as used in claim 6 is: “that the inner and
outer can have an identical common axis.”

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The Parties submitted a Joint Claim Construction Chart as Exhibit A to their Joint Claim
Construction and Prehearing Statement. See Docket #24. The Parties disagree as to the meaning
of five patent terms, as follows:
1.

An outer can having a bore.
Plaintiff’s Proposed Construction:

A body for attachment to a
transmission, the body having an
internal cavity.

Defendants’ Proposed Construction: A metal container on the outside of
the claimed assembly that has a hole.
2.

An inner can.
Plaintiff’s Proposed Construction:

A body configured to fit within the
bore of the outer can.

Defendants’ Proposed Construction: A metal container on the inside of
the claimed assembly.
3.

A vibration absorbing material positioned entirely within the bore of said
outer can and around said inner can.
Plaintiff’s Proposed Construction:

4.

Any material capable of attenuating
or absorbing vibrations or
mechanical energy and located
entirely within the outer can and
external to an interior of the inner
can.

Defendants’ Proposed Construction: A vibration absorbing material
located wholly within and
completely filling the bore of the
outer can except for the volume
taken up by the inner can and the
stops.
Attached.
Plaintiff’s Proposed Construction:

Fixedly secured.

Defendants’ Proposed Construction: Fastened or formed as a single piece.
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5.

Chemically bonded.
Plaintiff’s Proposed Construction:

A physical connection between the
vibration absorbing material and the
outer can and the inner can.
Defendants’ Proposed Construction: A bond formed by a chemical
reaction without application of
adhesives.
A.

“An Outer Can Having a Bore” and “Inner Can”
The Court has reviewed the respective positions of the Parties and finds that Defendant’s

construction of the terms “outer can having a bore” and “inner can” should be adopted. As noted
by Defendants, (1) Mr. Burns’ declaration to the U.S. Patent and Trademark Office refers to the
outer can as “metal” (Docket #19-4, Exhibit D); (2) the ordinary meaning of the word can is “a
usually cylindrical metal container” (Dictionary: Webster’s 2005); (3) the claim language
requires welding the inner and outer can to other components; and, (4) the specification
describes the goal of having near “metal-to-metal” contact between the inner and outer cans in
an attempt to overcome problems with welding in the prior art.
Accordingly, the proper construction for the phrase “outer can having a bore” is “a metal
container on the outside of the claimed assembly that has a hole” and the proper construction for
the phrase inner can is “a metal container on the inside of the claimed assembly.”
B.

“A Vibration Absorbing Material Positioned Entirely Within the Bore of Said
Outer Can and Around Said Inner Can.”
The Court has reviewed the respective positions of the Parties and finds that based upon

the record, the term “a vibration absorbing material positioned entirely within the bore of said
outer can and around said inner can” requires no construction. Further explanation is not
necessary to aid the Court or the jury in understanding these terms as they are written.
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The prosecution history of the ‘628 patent indicates that the word “entirely” was added to
the specification to explain that the vibration absorbing material was located entirely within the
outer can, not within the sleeve as in the prior art Buckingham ‘627 reference. (Docket #19,
Exhibit D.) The construction proposed by Defendants goes beyond what is indicated in the
record. There is nothing in the record to suggest that Plaintiff’s invention required the outer can
to be “completely” filled with the vibration-absorbing material. The term “entirely” refers to the
location of the vibration-absorbing material, rather than the volume.
Plaintiff offers a proposed construction of the term slightly different from that included in
the specification. However, the Court finds no basis upon which to deviate from the term as
written. Accordingly, the term “a vibration absorbing material positioned entirely with said bore
of said outer can and around said inner can” should be given its plain and ordinary meaning,
without imposing any limitations or restrictions not specifically included in the claim language
itself. Because further explanation is not necessary to aid the Court or the jury in understanding
these terms as they are used in the claimed invention, any proposed construction shall not be
adopted.
C.

“Attached”
The Court has reviewed the respective positions of the Parties and finds that based upon

the record, the term “attached” requires no construction. Further explanation is not necessary to
aid the Court or the jury in understanding the term as written.
The specification of the ‘628 patent reads as follows:
By using sleeve 18, objects of any shape or size may be later affixed to vibrationisolation assembly 10 in any method known in the art including, for example,
press fitting, weldment, swaging, or through the use of adhesive or traditional
fasteners.
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(‘628 patent, col 3, In. 20-24.)
Also, while the sleeve 18 is shown as attached to outer wall 13 of outer can 12, it
will be appreciated that these components may be formed as one piece, for
example, by casting or extrusion. For sake of simplicity, the term ‘attached’ will
be used in its traditional sense and to include formation of separate parts as a
single piece.
(‘628 patent, col. 3, In. 11-16).
The Court finds no basis upon which to deviate from the term as written. Plaintiff agrees
that the ‘628 patent specification is unambiguous. (Docket #29 at p. 11.) Defendants’ proposed
use of the term “fastened”is overly narrow, given the language of the specification contemplates
sleeve 18 being attached, or affixed, by means other than “fasteners.”
Accordingly, the term “attached” should be given its plain and ordinary meaning, without
imposing any limitations or restrictions not specifically included in the claim language itself.
Because further explanation is not necessary to aid the Court or the jury in understanding these
terms as they are used in the claimed invention, any proposed construction shall not be adopted.
D.

Chemically Bonded.
The Court has reviewed the respective positions of the Parties and finds that, based upon

the record, the term “chemically bonded” requires no construction. Further explanation is not
necessary to aid the Court or the jury in understanding the term as written.
The language of the ‘628 specification reads as follows:
The elastomer 16 may be chemically attached to outer can 12 and inner can 14 or
secured by mechanical entrapment. [F]or example the end 30 of outer can 12 may
be rolled over as depicted in FIG. 5 to entrap vibration-absorbing material 16.
Advantageously, this eliminates the additional step of applying adhesives or
chemically bonding the elastomeric material to outer can 12.
(Docket #19, Exhibit A, lines 28-35.)
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By adding sleeve 18, when attaching the shift lever, in contrast to the prior-art
method of directly attaching the shift lever to outer can 12, it is possible to heat
sink the outer can 12 protecting elastomeric vibration-absorbing material 16 and
the bond formed between the material 16 and the outer can 12. [I]n some cases,
this may eliminate the need for the use of adhesives to join vibration-absorbing
material 16 to outer can 12.
(Docket #19, Exhibit A, lines 26-32.)
Plaintiff’s discussion of the term “chemically bonded” is overly broad. Plaintiff points to
the specification, arguing that pursuant to the express language of the ‘628 patent specification,
there are many ways a “bond” can be achieved – a bond may be chemical, adhesive or both.
That may be true. However, the Court has only been asked to interpret the term “chemically
bonded” not simply “bonded.”
Defendant’s proposed construction – “a bond formed by a chemical reaction without
application of adhesives” is overly restrictive. The ‘628 patent specification does not indicate
that chemical bonds and adhesives are exclusive of one another.
The Court finds no basis upon which to deviate from the term as written. Accordingly,
the term “chemically bonded” should be given its plain and ordinary meaning, without imposing
any limitations or restrictions not specifically included in the claim language itself. Because
further explanation is not necessary to aid the Court or the jury in understanding these terms as
they are used in the claimed invention, any proposed construction shall not be adopted.
IV. CONCLUSION
For the reasons set forth above, the Court makes the following findings:
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The proper construction for the phrase “outer can having a bore” is “a
metal container on the outside of the claimed assembly that has a hole”
and the proper construction for the phrase “inner can” is “a metal
container on the inside of the claimed assembly.”

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The Court finds that the remaining terms should be construed according to their ordinary
and customary meaning without imposing any limitations or restrictions not specifically included
in the claim language itself. Further explanation is not necessary to aid the Court or the jury in
understanding these terms as they are used in the claimed inventions.
IT IS SO ORDERED.

s/Donald C. Nugent
DONALD C. NUGENT
United States District Judge
DATED: March 30, 2012

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