A to Z Machining Service LLC et al v. National Storm Shelter LLC et al
Filing
48
MEMORANDUM OPINION and ORDER - Markman hearing, claim construction ruling. Signed by Honorable Robin J. Cauthron on 8/16/11. (lg, )
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF OKLAHOMA
(1) A TO Z MACHINING SERVICE,
LLC; and
(2) FLATSAFE SHELTERS, LLC,
)
)
)
)
Plaintiffs,
)
)
vs.
)
)
(1) NATIONAL STORM SHELTER,
)
LLC; formerly doing business as
)
(2) TURNER MACHINE CO., INC.; and )
(3) JEFFREY D. TURNER, an individual, )
)
Defendants.
)
No. CIV-10-422-C
MEMORANDUM OPINION AND ORDER
Plaintiffs A to Z Machining Services, LLC (“A to Z”), and Flatsafe Shelters, LLC
(“Flatsafe”), brought suit against Defendants National Storm Shelter, LLC (“National”),
Turner Machine Co. (“Turner Co.”), and Jeffrey Turner (“Turner”) claiming Defendants’
storm shelters infringed on Plaintiffs’ patent and copyrights. On August 3, 2011, the Court
held a Markman hearing where the parties presented their arguments for claim construction.
Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517
U.S. 370 (1996). Being fully informed, the Court will now construct the relevant claims
contained in United States Patent No. 7,428,800 (“‘800 Patent”).
I. BACKGROUND
Plaintiffs manufacture and install patented below-ground storm shelters in garages of
residential homes for homeowners to escape dangerous storms. This specific shelter was
designed to allow the shelter lid to slide up and over the surrounding ground, despite debris,
without causing interruption to homeowners’ normal garage use. Plaintiffs own the ‘800
Patent that covers this shelter. Claim 1 of the ‘800 Patent states the following:
1. An underground shelter of the type having a front wall, a back wall, two opposing side
walls, a bottom and a top defining a substantially rectangular box with an opening defined
in the top, a flat lid adapted to cover the opening, a roller means for alternately rolling the lid
to expose or close the open top, the improvement comprising:
a. substantially, the entire top of the box defining an opening:
b. the lid adapted to be substantially flush with the surrounding ground level
in a closed position: and
c. a roller means comprising:
i. a track affixed to each of the side walls near the open top and
parallel thereto,
ii. at least one upper track roller disposed between the lid and
each track, each upper track roller rollingly supporting the lid as
it moves relative to the track,
iii. a support means for supporting a leading edge of the lid as it
slides over the surrounding ground level, the support means
having:
(1) at least one rail roller adjacent to the back
wall disposed between the lid and the track,
(2) a lower track roller attached to the lid near the
trailing edge, the lower track roller engaging a
lower track surface,
(3) at least one rail affixed to the underside of the
lid between the rail roller and the lid, each rail
having a sloped section near the leading edge of
the lid, whereby when the leading edge moves
away from the back wall, the lid is displaced
upwardly by operation of the sloped section
against the rail roller, providing additional
clearance for the lid as it passes over the ground
surface.
The relevant language to be construed in this Claim includes the following:
(1) “substantially flush” in Claim 1(b); (2) “rail roller” in Claim 1(c)(iii)(1); (3) “adjacent”
in Claim 1(c)(iii)(1); (4) “lower track roller” in Claim 1(c)(iii)(2); and (5) “rail” in Claim
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1(c)(iii)(3). Plaintiffs seek construction of two additional phrases, which the Court finds
redundant and unnecessary in light of the constructed language herein. (Pls.’ Br., Dkt. No.
38, at 21-23 (seeking construction of “rail affixed to the underside of the lid between the rail
roller and the lid” and “each rail having a sloped section near the leading edge of the lid”).)
II. CLAIM CONSTRUCTION STANDARD
When determining patent infringement, courts must first determine the scope and
meaning of the asserted patent claims. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1454 (Fed. Cir. 1998); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (“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.’” (quoting Innova/Pure Water, Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004))). Claim construction is an
issue of law that is done without reference to the allegedly infringing device. Markman., 52
F.3d at 970-71; Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1367 (Fed. Cir. 2008).
When construing claims, a court first must consider intrinsic evidence to determine the
meaning the term would have to a person of ordinary skill in the art in question at the time
of invention. Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1367 (Fed. Cir. 2003).
To begin this inquiry, courts consider the express language in the claims, the specification,
and prosecution history. Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359,
1368 (Fed. Cir. 2010).
If the intrinsic evidence does not establish the proper interpretation of the claim,
courts may consider extrinsic evidence, or evidence external to the patent and prosecution
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history, which includes inventor testimony, expert testimony, and dictionaries. L.B. Plastics,
Inc. v. Amerimax Home Prods., Inc., 499 F.3d 1303, 1308 (Fed. Cir. 2007). However, “a
claim construction analysis must begin and remain centered on the claim language itself, for
that is the language the patentee has chosen to ‘particularly point[ ] out and distinctly claim[ ]
the subject matter which the patentee regards as his invention.’” Innova/Pure Water, Inc.,
381 F.3d at 1116 (alterations in original) (quoting Interactive Gift Exp., Inc. v. Compuserve,
Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (quoting 35 U.S.C. § 112 (2000))).
When the ordinary meaning of claim language, as understood by one skilled in the art,
is apparent to lay judges, “general purpose dictionaries may be helpful.” Phillips, 415 F.3d
at 1314. However,
In many cases that give rise to litigation, . . . determining the ordinary and
customary meaning of the claim requires examination of terms that have a
particular meaning in a field of art. Because the meaning of a claim term as
understood by persons of skill in the art is often not immediately apparent, and
because patentees frequently use terms idiosyncratically, the court looks to
“those sources available to the public that show what a person of skill in the
art would have understood disputed claim language to mean.” Those sources
include “the words of the claims themselves, the remainder of the
specification, the prosecution history, and extrinsic evidence concerning
relevant scientific principles, the meaning of technical terms, and the state of
the art.”
Id. (citations omitted) (quoting Innova, 381 F.3d at 1116). Once the claims are construed by
the court, those claims are then compared to the allegedly infringing device; however, the
allegedly infringing device has no affect on the construction of the claim. SRI Int’l v.
Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985).
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III. DISCUSSION
A. Substantially Flush
The first language to be construed is “substantially flush” in Claim 1(1)(b). Plaintiffs
interpret this language to mean “in close proximity to, but slightly raised from.” Plaintiffs
argue that the use of “substantial” in the claim demonstrates that the word is used elastically
to indicate imprecision. Specifically, “substantially” is used three times in the claim:
“substantially rectangular box;” “substantially, the entire top of the box defining an
opening;” and “substantially flush with surrounding ground level.” (Pls.’ Br., Dkt. No. 38
Ex. 1.) Plaintiffs argue that the use of substantially in reference to the shape of the box is
illustrative because the box is tapered at the ends and is not a perfect rectangle.1
Defendants interpret this language to mean “coplanar with or offset from by an
amount less than what creates an obtrusive trip[ping] hazard.” (Defs.’ Br., Dkt. No. 39, at
12.) As support for their interpretation, Defendants rely on language in the specification and
prior art. Specifically, Defendants argue that specification language indicating the purpose
of the “substantially flush” lid, which is to provide an unobtrusive profile, informs the
meaning of “substantially flush.” Additionally, Defendants point to the differentiation made
between the ‘800 Patent and the Poole, U.S. Patent No. 5,953,866 (“‘866 Patent), in the
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Plaintiffs also point to the alleged infringer’s testimony as support for their
interpretation, upon which the Court does not rely due to the clarity of the term from the intrinsic
evidence. See Innova/Pure Water, Inc., 381 F.3d at 1116; see also Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996) (“Only if there were still some genuine
ambiguity in the claims, after consideration of all available intrinsic evidence, should the trial
court have resorted to extrinsic evidence, such as expert testimony, in order to construe
claim[s].”).
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specification as further support for their interpretation of “substantially flush.” The ‘866
Patent is indicated in the specification as the closest prior art to the ‘800 Patent which is
differentiated from the ‘866 Patent because “the [‘866 Patent] lid is well above ground level,
which may prevent a vehicle from parking above the shelter if installed in a garage and
which would also present a tripping hazard.” (Pls.’ Br., Dkt. No. 38 Ex. 1 col. 1:33-:41,
1:67-2:3.)
The Court finds that “substantially flush” in this context is somewhere between
Plaintiffs’ and Defendants’ interpretations. In addition to the use of “substantial” in the
claim, the specification distinguishes the closest prior art, the ‘866 Patent, and the ‘800 Patent
in terms of the lid, and, more specifically, in terms of the usability of the surrounding space
once that lid is closed, which informs the meaning of “substantially flush” in this context.
See Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (“‘We cannot
look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the
ordinary meaning in the context of the written description and the prosecution
history[ . . . ].’”) (first alteration in original) (quoting DeMarini Sports, Inc. v. Worth, 239
F.3d 1314, 1324 (Fed. Cir. 2001)). Accordingly, the Court construes “substantially flush”
in Claim 1(1)(b), as used in its ordinary and customary meaning to one skilled in the art, as
“coplanar with or offset from by an amount that does not interfere with normal garage use,
including parking cars or walking.”
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B. Rail Roller
Claim 1(c)(iii)(1) describes “at least one rail roller adjacent to the back wall disposed
between the lid and the track.” Plaintiffs interpret “rail roller” in this section to mean “a
bearing that rolls in contact with a sloped surface causing the lid to rise up and over the
surrounding ground surface as it opens.” (Pls.’ Br., Dkt. No .38, at 13.) As support for this
functional interpretation, Plaintiffs cite their expert witness’s and alleged infringer’s
testimony which describe “rail roller” as a surface on which a roller rolls that causes the lid
to move up and over the ground surface. Defendants argue that Plaintiffs’ reliance on
extrinsic evidence is unnecessary given the clarity of the meaning of “rail roller” in light of
intrinsic evidence—the Court agrees.
Additionally, Plaintiffs cite the following specification language as support for their
interpretation:
FIGS. 9A-9C show the cooperative action of the rail roller 122 and the
sloped section 116 to lift the lid 112 as it slides open so as to allow it to
rollingly pass over the surrounding ground level 108. FIG. 9A shows the lid
112 in a closed position, and the rail roller 122 in direct contact with the lid.
(Pls.’ Br., Dkt. No. 38 Ex. 1 col. 6:3-:7.) Plaintiffs argue this language proves that the rail
roller may either be in direct contact with the lid or the sloped section.
“Rail roller” is used numerous times in the claim and specification, and in these
instances is described, or depicted, as rolling on the rails. (See, e.g., id. figs. 9B & C.) And
the Court finds no reason to rely on Plaintiffs’ expert’s testimony and conclusions regarding
the alternate meaning of “rail roller” given the clarity of the claim language and specification.
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Vitronics Corp., 90 F.3d at 1584. The insertion of “bearing” into the meaning of “rail roller”
would introduce an unintended expansion into claim 1. See Chimie v. PPG Indus., Inc., 402
F.3d 1371, 1384 (Fed. Cir. 2005). Because the claim language and specification makes clear
the meaning of “rail roller” as “a roller that rolls on a rail,” no such evidence need be relied
upon. Additionally, the meaning of “rail” is described below as a distinctly construed term
and its meaning is constant. Therefore, “rail roller” is construed as “a roller that rolls on a
rail.”
C. Adjacent
Claim 1(c)(iii)(1) describes “at least one rail roller adjacent to the back wall disposed
between the lid and the track.” In this claim, adjacent is used in two respects: as simply
“adjacent,” and as “more closely adjacent.” Plaintiffs argue that this difference indicates that
“adjacent” is not used comparatively and that “more closely adjacent” is. (Pls.’ Br., Dkt. No.
38 Ex. 1 col. 4:47-:49.) Plaintiffs assert that “adjacent” means the following: “not distant:
nearby with the absence of anything of the same kind in between.” (Pls.’ Br., Dkt. No. 38,
at 20.) Defendants agree, but assert that the meaning of “adjacent” should also include
stationary, because the moving trailing edge of the lid is defined in terms of being “more
closely adjacent” to the back wall. Defendants interpret “adjacent” to mean “not distant:
nearby and stationary with the absence of anything of the same kind in between.” (Defs.’
Br., Dkt. No. 39, at 17.)
Besides pointing to the fact that the portion of the device that is described by “more
closely adjacent” happens to move, Defendants have not offered any evidence that the
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ordinary and customary understanding of “adjacent” by one skilled in the art is in terms of
movability. Nor is the Court so persuaded. Phillips, 415 F.3d at 1314 (“In some cases, the
ordinary meaning of claim language as understood by a person of skill in the art may be
readily apparent even to lay judges, and claim construction in such cases involves little more
than the application of the widely accepted meaning of commonly understood words.”).
Accordingly, the term “adjacent” in claim 1 of the ‘800 Patent is construed as “not distant:
nearby with the absence of anything of the same kind in between.”
D. Lower Track Roller
Claim 1(c)(iii)(2) states the following: “a lower track roller attached to the lid near
the trailing edge, the lower track roller engaging a lower track surface.” Plaintiffs interpret
“lower track roller” to mean: “a bearing for engaging the lower track surface to prevent the
lid from tipping as it passes over the surrounding ground surface.” (Pls.’ Reply, Dkt. No. 41,
at 4-5.) Defendants claim that prosecution history exemplifies that “rollers that are
placed . . . below the track” was part and parcel of the United States Patent and Trademark
Office’s (“Patent Office”) reason for allowance.
Defendants argue that Plaintiffs’
interpretation ignores this limitation by seeking to expand the meaning beyond roller.
Defendants interpret “lower track roller” as “a roller that rolls on a lower surface of a track.”
(Defs.’ Br., Dkt. No. 39, at 18.)
The Court agrees that the prosecution history limits Plaintiffs’ sought-for construction
regarding the present language. On June 17, 2004, Plaintiffs filed an application for the ‘800
Patent. (Pls.’ Br., Dkt. No. 38, at 1.) Original claim 1 stated the following:
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1.
An improved shelter of the type having a front wall, a back wall, two
opposing side walls, a bottom and a top defining a substantially rectangular
box with an opening defined in the top, a flat lid adapted to cover the opening,
a roller means for alternately rolling the lid to expose or close the open top, the
improvement comprising:
a. substantially, the entire top of the box defining an opening;
b. the lid adapted to be substantially flush with the surrounding ground
level in a closed position; and
c. a roller means for allowing the lid to slide above the ground level,
exposing more than half of the top when in an open position.
(Id. Ex. 3, at 3.) The Patent Office rejected Plaintiffs’ original claims 1 through 7, 9 through
20, and claim 22 due to a lack of novelty and objected to claims 8 and 21 as depending on
disallowed base claims. (Id. Ex. 1.) The inventor did not object to these findings; rather, he
amended the allowable claims 8 and 21 to incorporate the limitations of the claims on which
they depended, but made no substantive changes. (Pls.’ Br., Dkt. No. 38 Ex. 3 at 9 (“[R]ather
than arguing the merits in the present application, Applicant has amended allowable
dependent claims 8 and 21 to incorporate the limitations of the claims from which they
depend, so those claims should be allowed as re-written.”).) This caused original claim 8,
which was initially dependant on original claim 7—which in turn was dependent on
independent, original claim 1—to become independent by deleting “The support means of
claim 7 further comprising . . . .” (Id. Ex. 3, at 4.) Amended claims 9 through 14 then
depended on original claim 8, and amended claim 22 depended on original claim 21. (Id. at
5-8.) On September 30, 2008, the Patent Office issued the patent.2
2
On July 21, 2010, Plaintiffs sought amendment of the Patent to broaden the claims
regarding rollers and sloped rails. On April 27, 2010, about three months before the sought-for
amendment, Plaintiffs filed the present suit. On September 20, 2010, Defendants protested the
reissue application, and thereafter submitted amended protests. Defendants claim that Plaintiffs
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The prosecution history outlined above indicates that the originally sought-for claims,
which were rejected by the Patent Office, were too broad for that office to issue a patent.
The examiner’s reason for allowance of the narrower, amended claims included the
compilation of the following elements: “a track affixed to the side walls and at least one rail
affixed to the lid,” “a series of rollers that are placed between both the lid and track[] and
below the track,” and “a sloped section on the rail affixed to the lid [that] interacts with the
rail roller to displace the lid upwardly allowing the lid to clear the surrounding surface.”
(Defs.’ Br., Dkt. No. 39 Ex. 10, at 3 (emphasis added).)
This limitation prohibits Plaintiffs from broadening the element to mean “a bearing
for engaging the lower track surface to prevent the lid from tipping as it passes over the
surrounding ground surface.” Phillips, 415 F.3d at 1317 (finding that “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”). Accordingly,
the Court construes “lower track roller” as “a roller that rolls on a lower surface of a track.”
E. Rail
Finally, Claim 1(c)(iii)(3) states that: “at least one rail affixed to the underside of the
lid between the rail roller and the lid, each rail having a sloped section near the leading edge
of the lid, whereby when the leading edge moves away from the back wall, the lid is
surrendered any subject matter that broadens the subject matter of original dependent claim 8. If
the Patent Office grants Plaintiffs’ request to broaden the scope of the claims, this would moot
the current litigation and the Court’s construction of the current claims.
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displaced upwardly by operation of the sloped section against the rail roller, providing
additional clearance for the lid as it passes over the ground surface.” Plaintiffs interpret
“rail” to mean “a surface against which a roller may operate,” and cite as support for this
interpretation the following specification language:
FIGS. 9A-9C show the cooperative action of the rail roller 122 and the
sloped section 116 to lift the lid 112 as it slides open so as to allow it to
rollingly pass over the surrounding ground level 108. FIG 9A shows the lid
112 in a closed position, and the rail roller 122 in direct contact with the lid.
(Pls.’ Br., Dkt. No. 38 Ex. 1 col. 6:3-:7 (emphasis added).) Additionally, Plaintiffs cite as
support both of their experts’ opinions that rail means “a surface that a bearing or roller rides
on.” (Pls.’ Br., Dkt. No. 38, at 15.) As support for their argument that a feature of an
element may be separately added or inherent in that element—here, a rail being inherent in
the lid—Plaintiffs rely on Cargill, Inc. v. Sears Petroleum & Transport Corp., 334 F. Supp.
2d 197, 221-22 (N.D.N.Y. 2004).
Defendants cite as support for their interpretation the following relevant Claim
language: “at least one rail affixed to the underside of the lid between the rail roller and the
lid, each rail having a sloped section near the leading edge of the lid, whereby when the
leading edge moves away from the back wall, the lid is displaced upwardly by operation of
the sloped section against the rail roller, providing additional clearance for the lid as it passes
over the ground surface.” (Defs.’ Br., Dkt. No. 39 Ex. 6 col. 7:42-48.) Defendants argue that
this claim language proves that rail means affixed to the lid with a sloped section, which
operates against the rail roller to displace the lid upwardly. The Court agrees.
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The claim language itself, in addition to the specification and reason for allowance,
expressly encompasses within the meaning of “rail” the sloped section, being affixed to the
underside of the lid, and displacing the lid upward. In addition to the above-cited claim 1
language, the specification states that
The support means may further comprise a rail affixed to the underside of the
lid between the rail roller and the lid, the rail having a sloped section near the
leading edge, whereby when the leading edge moves away from the back wall,
the lid is displaced upwardly by the sloped section operating against the rail
roller . . . .
(Id. Ex. 6 col. 2:54-:59.) Additionally, the sloped rail’s affixation to the lid was part of the
reason for allowance by the Patent Office, as previously discussed, which marked the
difference between the ‘800 Patent and another patent, the Pierson U.S. Patent No.
3,114,153. (Defs.’ Br., Dkt. No. 39 Ex. 10 at 3 (“The closest cited prior art, Pierson . . .
functions in a similar manner. . . . [but] it lacks the structure claimed in the present
invention,” including a sloped section on the rail affixed to the lid that interacts with the rail
roller).) While the Court does not necessarily disagree with Plaintiffs’ argument that a
feature can be inherent in an element, that is simply not the case here, where the meaning of
rail is limited by other qualifications that the lid does not satisfy. Considering the express
language of the Claim, the specification, and prosecution history, the Court construes “rail”
as “a support member having a sloped section, affixed to the underside of the lid, selectively
contacting the rail roller to raise the lid and support the lid in the raised position.”3
3
In addition to the elements construed herein, Defendants sought this Court’s ruling
regarding whether the language “support means” and “a roller means” fit within the parameters
of 35 U.S.C. § 112(6). While Plaintiffs briefly addressed Defendants’ assertion during the
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IV. CONCLUSION
For the above stated reasons, the Court so construes the following language in Claim
1 of the ‘800 Patent: (1) “substantially flush” as “coplanar with or offset from by an amount
that does not interfere with normal garage use, including parking cars or walking;” (2) “rail
roller” as “a roller that rolls on a rail;” (3) “adjacent”as “not distant: nearby with the absence
of anything of the same kind in between;” (4) “lower track roller” as “a roller that rolls on
a lower surface of a track;” (5) “rail” as “a support member having a sloped section, affixed
to the underside of the lid, selectively contacting the rail roller to raise the lid and support the
lid in the raised position;” and (6) “affixed” as “attached.”
IT IS SO ORDERED this 16th day of August, 2011.
Markman hearing, the parties have not fully briefed the issue and the Court will not now attempt
to resolve it without the benefit of such briefing. (See Pls.’ Suppl., Dkt. No. 47 Ex. 1, at 99
(briefly touching on the means-plus-function doctrine in a presentation).) Also, Defendants
sought construction of “affixed” as “attached,” to which Plaintiffs agreed and the Court will now
so construe. (Defs.’ Br., Dkt. No. 39, at 23; Pls.’ Suppl., Dkt. No. 47 Ex. 1, at 98.)
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