WAGO Verwaltungsgesellschaft mbH v. Rockwell Automation, Inc.

Filing 47

Opinion and Order denying Defendant Rockwell Automation, Inc.'s Motion for judgment on the pleadings...(more) (Related Doc # 41 ). Judge Christopher A. Boyko on 3/7/2012.(M,M)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION

WAGO Verwaltungsgesellschaft mbH,
Plaintiff,
vs.
Rockwell Automation,
Defendant.

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CASE NO. 1:11-CV-00756
JUDGE CHRISTOPHER A. BOYKO
OPINION AND ORDER

CHRISTOPHER A. BOYKO, J.:
Before the Court is Defendant Rockwell Automation, Inc.’s (“Rockwell”) Motion for
Judgment on the Pleadings (“Motion”) (ECF DKT #41). The Court has reviewed the Motion,
Rockwell’s Memorandum in Support (“Mem.”) (ECF DKT #41-1), Plaintiff WAGO
Verwaltungsgesellschaft mbH’s (“WVG”) Opposition (ECF DKT #43), and Rockwell’s
Reply Memorandum (“Reply”) (ECF DKT #44). For the following reasons, Rockwell’s
Motion is DENIED.
I. FACTS
WVG’s Amended Complaint (ECF DKT #12) (“Complaint”) alleges that Rockwell
has engaged in direct infringement, inducement of infringement, and contributory
infringement of U.S. Patent No. 5,716,214 (“’241 Patent”), held by WVG. Specifically,
WVG alleges infringement of Claims 1, 2, 3, and 4 of the ’241 Patent, detailed below:
A. Claim 1 of the ’241 Patent
1. An input/output device for a data bus, said device being located on a support rail and being
adapted to be positioned adjacent other such devices, said device comprising:

a plurality of terminal points for the parallel wiring of bus parts, and
electronic means which connects bus parts to a serial data bus line and a power supply
line, wherein the improvement comprises:
configuring the device with other such devices as series terminals, each having said
electronic means, each device being located on the support rail either singly so as to
define individual terminals, or in a group so as to define a terminal block having bus
terminals;
said data bus line and power supply line being incorporated in the bus terminals and
being slipped therethrough;
each bus terminal having at least one pressure contact in a lateral face thereof which
extend towards an adjacent terminal of an adjacently positioned device, the contact
automatically contacting the device to an adjacent device in the series direction of the
bus terminals so that the bus terminals, which are located on the support rail, are
connected to traversing data bus lines and power supply lines to form said bus
terminal; and
at least one power bridging member for providing power to the parts communicated
with the terminal points of the bus terminals, said power bridging member being
fixedly disposed on the lateral face of the bus terminal and the terminal block, and
engaging automatically with another power bridging member of an adjacent device
when the bus terminals are mounted on the support rail.

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B. Claim 2 of the ’241 Patent
The I/O device as set forth in claim 1, said power bridging member comprising a
knife-like contact and a resilient fork-like contact, the contacts being provided alternately on
the lateral faces of the bus terminals and engaging one another in the transverse direction
when the bus terminals are mounted on the support rail.
C. Claim 3 of the ’241 Patent
The I/O device as set forth in claim 2, said power bridging member forming the
end-pieces of a bar-like flat rail which extends internally through the individual bus terminals
and the bus terminal blocks.
D. Claim 4 of the ’241 Patent
4. An input/output device for a data bus, said device being locatable on a support rail, and
positioned adjacent other such devices, said device having terminal points for the parallel
wiring of bus parts, and having an electronic means which connects parts to a serial data bus
line, wherein the improvement comprises:
configuring the device as series terminals having an incorporated or mountable
electronic means, such device being locatable on the support rail in a manner known
per se as separate individual terminals or in a group of several as a terminal block;
data bus lines and power supply lines for the electronic means being incorporated in
bus terminals and being slipped therethrough, each individual bus terminal and each
bus terminal block having pressure contacts in lateral faces thereof which extend
towards adjacent terminals;
bus contacts automatically contacting one another in the series direction of the bus

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terminals when the bus terminals are located on the support rail so that the bus
terminals which are located on the support rail are connected to transversing data bus
lines and power supply lines to form a terminal bus;
power bridge members for providing power to the parts communicating with the
terminal points of the bus terminals, said members being fixedly disposed on the
lateral faces of each bus terminal and each bus terminal block and engaging
automatically one another when the bus terminals are mounted on the support rail,
each bridging member comprising a knife-like contact and a resilient fork-like contact,
the contacts being provided alternately on the lateral faces of the bus terminals and
engaging one another in the transverse direction when the bus terminals are mounted
on the support rail.
See Am. Compl.¶¶36-9.
In its Answer (ECF DKT #29), Rockwell asserts as an affirmative defense that the
’241 Patent is invalid under 35 U.S.C. § 112. See Answer ¶66. According to Rockwell,
Claims 1 and 4 of the ’241 Patent impermissibly mix “method” and “apparatus” elements, and
consequently Claim 1, and its dependent Claims, and Claim 4 are invalid for indefiniteness
under IPXL Holdings, L.L. C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed.Cir.2005). Mem. 9.
II. STANDARD OF REVIEW
Because this case arises under an “Act of Congress relating to patents,” 28 U.S.C. §
1338(a), the law of the Federal Circuit controls, see 28 U.S.C. § 1295(a)(1); however, the
Federal Circuit applies the law of the “regional circuit” to procedural matters. See
MicroStrategy Inc. v. Business Objects, S.A., 429 F.3d 1344, 1349 (Fed. Cir. 2005). A motion

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for judgment on the pleadings under Rule 12(c) is procedural; therefore, Sixth Circuit law
applies. See Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317, 1321 (Fed. Cir. 2007)
(“As with Rule 12(b)(6) motions, the question of whether a motion for judgment on the
pleadings was properly granted is a purely procedural question not pertaining to patent law, to
which this court applies the rule of the regional circuit.”).
After the pleadings are closed but within such time as not to delay the trial, any party
may move for judgment on the pleadings. Fed. R. C.iv. P. 12(c). In this jurisdiction, “[t]he
standard of review for a judgment on the pleadings is the same as that for a motion to dismiss
under Federal Rule of Civil Procedure 12(b)(6) . . . . We ‘construe the complaint in the light
most favorable to the plaintiff, accept all of the complaint’s factual allegations as true, and
determine whether the plaintiff undoubtedly can prove no set of facts in support of the claims
that would entitle relief.’” Roger Miller Music, Inc. v. Sony/ATV Publishing, LLC, 477 F.3d
383, 389 (6th Cir. 2007) (citations omitted). The Court’s decision “rests primarily upon the
allegations of the complaint”; however, “‘exhibits attached to the complaint[] also may be
taken into account.’” Barany-Snyder v Weiner, 539 F.3d 327, 332 (6th Cir. 2008) (citation
omitted) (brackets in the original). Lastly, a Rule 12(c) motion “is granted when no material
issue of fact exists and the party making the motion is entitled to judgment as a matter of
law.” Paskvan v. City of Cleveland Civil Serv. Comm’n, 946 F.2d 1233, 1235 (6th Cir. 1991).
III. ROCKWELL’S MOTION
Rockwell has moved the Court for judgment on the pleadings pursuant to Fed. R. Civ.
P. 12(c). Rockwell posits that Claims 1 and 4 are “apparatus” claims that contain an
impermissible “method” element. Specifically, Rockwell objects to the use of the

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introductory phrase “configuring the device” in the claims. Mem. 7. The gravamen of
Rockwell’s argument is that use of a gerund to introduce a claim element “unequivocally
implies an act in a method claim.” Mem. 12. Rockwell goes so far as to declare,
axiomatically, “[t]he difference between proper elements of an apparatus claim, on the one
hand, and a method claim, on the other, comes down to grammar.” Mem. 12.
IV. WVG’S OPPOSITION
Conversely, WVG argues that the use of the phrase “configuring the device” in the
’241 Patent represents permissible functional language introducing the hardware
characteristics of their device. Opposition 18. Furthermore, WVG offers several additional
reasons for denying Rockwell’s Motion. Initially, WVG argues that their pleading is
sufficient because it conforms to one of the forms provided for in the Appendix to the Federal
Rules. Opposition 11-13. They also contend that because a request for judgment on the
pleadings relies solely on the Complaint and the attached patent, the record is insufficient to
overcome the patent’s presumption of validity. Opposition 13-14. Similarly, WVG believes
that Rockwell’s request is premature, as the Local Patent Rules dictate a sequence of events
that expand the record prior to a claim construction ruling by the Court. Opposition 14-15.
V. LAW AND ANALYSIS
WVG argues that Rockwell’s Motion should be denied due to the Complaint’s
conformity with Fed. R. Civ. P. App. B Form 18. Opposition 13. The Court finds this
argument without merit. Rockwell’s Motion does not challenge the sufficiency of the
Complaint, it challenges the ’241 Patent’s validity under 35 U.S.C. § 112. Therefore,

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conformity with Form 18 is irrelevant in determining whether the ’241 Patent is invalid for
indefiniteness.
Rockwell’s Motion requires a two-step examination. As a threshold issue, the Court
must determine whether the law allows for a determination of indefiniteness based solely on
the record available at this stage of the proceeding. If it does, the Court may determine
whether the phrase “configuring the device,” as it appears in the ’241 Patent, dooms the
claims as indefinite.
A. Is the Record Sufficient to Overcome the ’241 Patent’s Presumption of Validity?
WVG declares the law is clear: “A patent is presumed valid and the party moving for
invalidity has the burden of establishing invalidity by clear and convincing evidence.”
Opposition 13 (citing Parker-Hannifin Corp. v. Baldwin Filters, Inc., 724 F. Supp. 2d 810,
813 (N.D. Ohio 2010)). WVG concedes that“[w]hether a claim is invalid . . . for
indefiniteness is a question of law,” but argue the “disputed facts underlying the legal
conclusion” of invalidity must be established by clear and convincing evidence. Opposition
5-6 (citing Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692
(Fed. Cir. 2001), and Newell Cos. v. Kenney Manufacturing. Co., 864 F.2d at 767 (Fed. Cir.
1988), respectively). WVG further offers multiple Federal Circuit cases standing for the
proposition that claim indefiniteness is only found when a person of ordinary skill in the art
could not determine the bounds of the claims. Reply 6-7 (see, e.g., Halliburton Energy
Services v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008) (“The common thread” in cases
where the Federal Circuit has invalidated claims for indefiniteness “is that claims were held

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indefinite only where a person of ordinary skill in the art could not determine the bounds of
the claims, i.e., the claims were insolubly ambiguous.)).
Although not argued explicitly, it appears WVG believes that without claim
construction, i.e., an expert explanation of “the meaning of terms as they are used in patents
and as they would be perceived and understood in the field of invention” Merck & Co. v. Teva
Pharms. USA, Inc., 347 F.3d 1367, 1372 (Fed. Cir. 2003), a determination of indefiniteness is
impossible. WVG offers:
The record before the Court in the context of Defendant’s Motion is inadequate
to enable the Court to do what Defendant requests. “The record that the Court
may consider on a 12(b)(6) [or 12(c)] motion — the complaint and the attached
patent — is insufficient for the Court to construe the patent claims contrary to
plaintiff’s allegations of infringement and rule that it is invalid.” Progressive
Casualty Insurance Co. v. Safeco Insurance Co., 2010 U.S. Dist. LEXIS 120225,
*8 (N.D. Ohio 2010) (footnote omitted).
Opposition 14.
Conversely, Rockwell believes claim construction is unnecessary for a determination
of indefiniteness – the record is sufficient because, simply, “[t]he claims say what they say.
There is no need to decipher the meaning of the word ‘configuring,’ but rather only to
determine the effect of WVG having used that word.” Reply 3. Their belief is supported by
case law.
In Intellect Wireless, Inc. v. Kyocera Commc’ns, Inc., 2009 WL 3259996 (N.D. Ill.
Oct. 8, 2009), the court considered whether claim construction is necessary for a finding of
indefiniteness:
Before addressing the merits of Kyocera's motion, the court first must
consider Intellect Wireless's assertion that the motion automatically fails because
Kyocera has made no attempt to construe the disputed claims. Without the
requisite claim construction, Intellect Wireless argues, Kyocera cannot meet its
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burden of proving that the claims at issue are insolubly ambiguous to one of
ordinary skill in the art. The court, however, finds that determining whether the
’186 and ’416 Patents impermissibly claim mixed subject matter does not require
claim construction.
Although many of the district courts addressing this issue rendered their
indefiniteness decisions either after or concurrently with the claim construction
phase of the litigation, those decisions typically do not invoke or rely upon claim
constructions. Moreover, neither IPXL Holdings nor Microprocessor, the only
Federal Circuit decisions to date addressing mixed subject matter claims, indicates
that claim construction is a prerequisite to judicial determination of invalidity due
to indefiniteness. Consequently, the court finds that it can resolve the legal issue
presented in Kyocera's motion without construing the patents’ claims beyond their
plain and ordinary meaning.
Intellect Wireless at *3 (citations omitted) (footnote omitted).
Rockwell also persuasively distinguishes WVG’s citation of Progressive
(offered in support of the proposition that the record is insufficient at this early stage
to construe claim terms) from the present case by observing Progressive “dealt with a
different statutory basis of invalidity (35 U.S.C. § 101 (patent eligible subject matter))
than the case at bar (35 U.S.C. § 112 (indefiniteness)). Determining whether a claim
contains patent-eligible subject matter would likely always require claim construction
because the question goes to what has been claimed.” Reply 4. Given that the issue
before the Court does not concern a dispute over the ’241 Patent’s subject matter
eligibility, the Court declines to rely upon Progressive.
The Court does not find an expansion of the record is necessary, either as a
matter of law, or to construe the meaning of “configuring the device” as it appears in
the ’241 Patent. Therefore, the Court finds the record is sufficient to definitively
determine whether the disputed claims are indefinite.
B. Does Rockwell’s Motion Circumvent Local Patent Rules?

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In a similar vein, WVG argues that engaging in claim construction at this stage
of the proceeding would circumvent Local Patent Rules. Opposition 14-15. WVG
again leans heavily upon Progressive for the proposition that a Rule 12 motion is
premature. However, the Court has already found that case to be distinguishable. On
the other hand, WVG correctly points out that the Local Patent Rules “provide for the
parties to identify material claim construction disputes, present such disputes to the
Court in an orderly fashion with all of the available evidence, and achieve an informed
decision.” Id. In short, the Rules outline a procedure for the presentation and
evaluation of evidence to determine the meaning of disputed terms.
In this case, there are no disputed terms. “Configuring the device” is not
purported to have specialized meaning to a person of ordinary skill in the art.
Rockwell asserts, and the Court agrees, the term at issue is clear; the dispute is over
the effect of that term, i.e., does use of a gerund automatically denote a method
element? See Reply 6 fn2. Therefore, the Court finds that in the absence of a disputed
term, ruling on a 12(c) motion does not circumvent the Local Patent Rules.
C. Does the ’241 Patent Contain Mixed Subject Matter in Violation of 35 U.S.C.
§ 112?
Rockwell contends the ’241 Patent violates a “simple, but fundamental,
principle of patent law: a single patent claim can cover a device or it can cover a
method, but it cannot cover both.” Mem. 1. This principle was made law in IPXL
Holdings L.L.C. v. Amazon.com, Inc. 430 F.3d 1377, 1384 (Fed. Cir. 2005) (holding
that a single claim containing elements directed to both an apparatus and method is

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invalid). Furthermore, the Federal Circuit reaffirmed the rule within the last year,
stating that “‘reciting both an apparatus and a method of using that apparatus renders a
claim indefinite under section 112, paragraph 2.’” See Rembrandt Data Techs., LP v.
AOL, LLC, 2011 WL 1458662, at *7 (Fed. Cir. Apr. 18, 2011) (quoting IPXL
Holdings, 430 F.3d at 1384).
WVG and Rockwell agree the ’241 Patent is purported to be an apparatus,
specifically “[a]n input/output device for a data bus.” However, in Rockwell’s view,
all of the claims of the ’241 Patent are invalid for indefiniteness under IPXL Holdings.
Specifically, Rockwell objects to the use of the phrase “configuring the device” in
Claims 1 and 4. Rockwell argues that use of the gerund, “configuring,”
“unequivocally implies an act in a method claim.” Mem. 12 (citing Nikon Corp. v.
ASM Lithography B. V., 308 F. Supp. 2d 1039, 1065 (N.D. Cal. 2004)). In Rockwell’s
view “‘configuring the device’ is directed to a user action, not the device’s
capabilities.” Rep. 7. Furthermore, Rockwell argues “the same problem infects
claims 2 and 3, both of which are dependent on defective claim 1 (claim 2 of the ‘241
Patent is dependent on claim 1, and claim 3 is dependent on claim 2). See, e.g., Ariba,
Inc. v. Emptoris, Inc., 2008 WL 3482521, at *8 (E.D. Tex. Aug. 7. 2008) (‘Because
claim 31 recites both an apparatus and a method, it is indefinite and therefore invalid
under 35 U.S.C. § 112(2). Its dependent claims, claims 32-36 and 38, are likewise
invalid.’).” Mem. 8-9.

WVG states that Claims 1 and 4 “must be read in view of the specification of

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which they are a part.” Opposition 17 (citing Markman v. Westview Instruments, Inc.,
52 F.3d 967, 979 (Fed. Cir. 1995)). In light of the specification (ECF DKT #12-1),
WVG offers an alternative reading of “configuring the device”:
. . . it is apparent even without undertaking to construe Claims 1 and 4 that the
“configuring the device .. .” requirement does not provide a method of using the
claimed apparatus but instead describes a feature of the claimed apparatus
whereby “the I/O devices are configured as series terminals having an
incorporated or mountable electronic means . . . .” (Dkt.12-1, ’241Patent, col. 2,
ll. 13-15) The specification contradicts any construction to the effect that the
“configuring the device .. .” requirement provides a method of using the claimed
apparatus.
The term “configuring the device .. .” in the ’241 Patent is functional
language describing hardware characteristics of the claimed invention.
“[A]pparatus claims are not necessarily indefinite for using functional language.”
Microprocessor Enhancement Corp., 520 F.3d at 1374 (citing Halliburton Energy
Services v. M-I LLC, 514 F.3d at 1255).
Opposition 18.
A similar dispute was resolved in Collaboration Properties, Inc. v. Tandberg
ASA, 2006 WL 1752140 (N.D. Cal. June 23, 2006). In Collaboration Properties, the
defendant argued that the phrase “configured to” injected a method step into a
purported system claim. Collaboration Properties at *6. The court rejected that
argument:
Tandberg's position is incorrect because the disputed claim language
recites the functionality of the claimed system rather than the act of using the
system. The problematic claim language in IPXL Holdings required that “the user
uses the input means” to perform certain functions-an act. The language in the
claims of the asserted patents, in contrast, requires that the system be “configured
to” perform certain functions when it is used-a statement of functionality.
Collaboration Properties at *6.
Although Rockwell argues “the language in the ‘241 patent specification states
‘the I/O devices are configured,’ that is, the past tense of the action of configuring, an
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action undertaken by a person” (Rep. 7), the Court is not persuaded. Like the court in
Collaboration Properties, this Court finds that the use of the gerund phrase
“configuring the device” in the ’241 Patent is permissible functional language. It
speaks to the modularity of the apparatus – a hardware characteristic – rather than an
act performed by a person.
V. CONCLUSION
In the Court’s judgment, the record is sufficient to determine the plain meaning
of the phrase “configuring the device” as it appears in the ’241 Patent. Rockwell’s
objection to the phrase is well-founded – it almost certainly reflects sub-optimal
drafting. However, the Court is not convinced sub-optimal drafting automatically
denotes mixed subject matter and indefiniteness. In the Court’s view, the ’241
Patent’s use of “configuring the device” reflects functional language describing
hardware characteristics of the device, not a method of using the device. Therefore,
Rockwell’s Motion is DENIED.

IT IS SO ORDERED.
DATE: _March 7, 2012__________

S/Christopher A. Boyko
CHRISTOPHER A. BOYKO
United States District Judge

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