JPW Industries, Inc. v. Olympia Tools International, Inc.

Filing 87

ORDER FOLLOWING CLAIM CONSTURCTION HEARING signed by Judge Jon Phipps McCalla on 10/5/2017. (DOCKET TEXT SUMMARY ONLY-ATTORNEYS MUST OPEN THE PDF AND READ THE ORDER.)(ab)

IN THE UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF TENNESSEE
NASHVILLE DIVISION

JPW INDUSTRIES, INC.,
Plaintiff,
v.
OLYMPIA TOOLS INTERNATIONAL,
INC.
Defendant.

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No. 3:16-cv03153

ORDER FOLLOWING CLAIM CONSTRUCTION HEARING

The cause is before the Court on the parties’ request for claim construction pursuant to
Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), filed May
25, 2017. (ECF No. 30.) The Court has considered the parties’ claim construction briefs and
arguments made at the claim construction hearing on September 6, 2017. The Court’s
determinations regarding claim term interpretation are set out below.
I.

BACKGROUND
A. Factual History
The action arises out of allegations by Plaintiff JPW Industries (“JPW”) against

Defendant Olympia Tools International (“OTI”) of infringement of United States Patent
9,079,464 (“the ’464 patent”). Plaintiff JPW is a Washington corporation with a principal
place of business in Tennessee. (Compl., ECF No. 1 ¶ 5.) Defendant OTI is a California
corporation with a principal place of business in California. (Id. ¶ 6.)

Page 1

This action involves alleged infringement of the following patent on a portable vise,
invented by Timothy Onello and Charles Weber and assigned to JPW:
U.S. Patent Number
9,079,464

Issued
July 14, 2015

Patent
Portable Work Holding Device and Assembly

(Id. ¶¶ 11-12; U.S. Patent 9,079,464, ECF No. 1-1.) JPW alleges that OTI’s OLYMPIA
HITCH VISE (Model No. 38-652) infringes on one of more the inventions recited in the ‘464
Patent. (Compl. ¶¶ 13-15). JPW asserts that at least claims 1, 3, 5-8, 12, and 21-25 are
infringed. (Id. at ¶ 15.) JPW sells a competing portable vise, ATV: ALL TERRAIN VISE,
and has entered two copies of the device into evidence as Exhibits 1 and 2.
B. Procedural History
Plaintiff filed the Complaint on December 6, 2016, in the Middle District of
Tennessee. (ECF No. 1.) On February 24, 2017, Defendant filed an Answer to the
Complaint, denying infringement and raising affirmative defenses including invalidity and
prosecution history estoppel. (Def.’s Ans., ECF No. 20.) On March 9, 2017, the parties held
an initial case management conference before Magistrate Judge Barbra Holmes, (ECF No.
23), and on March 16, 2017, Magistrate Judge Holmes entered an Initial Case Management
Order. (ECF No. 24.)
On May 25, 2017, the parties entered a Joint Claim Construction Statement (ECF
No. 30), identifying eight claims whose terms the parties disputed. On June 9, 2017, both
parties filed Opening Claim Construction Briefs. (ECF Nos. 35-36.)
On June 1, 2017, Defendant filed a Motion for Judgment on the Pleadings for
Dismissal Based on Improper Venue. (ECF No. 31.) On June 29, Plaintiff filed a response to
the motion. (ECF No. 44.) On July 11, 2017, Defendant filed a reply. (ECF No. 50.) On
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July 19, 2017, the Court ordered supplemental briefs on whether Defendant has “a regular and
established place of business” in this District. On August 8, 2017, Defendant filed its
supplemental response. (ECF No. 63.) On August 24, 2017, Plaintiff filed its reply to
Defendant’s supplemental response. (ECF No. 77.) Defendant’s motion to dismiss remains
pending before the Court.
On June 22, 2017, the Court held a Telephonic Scheduling Conference with the
parties. (Min. Entry., ECF No. 34.) On August 11, 2017, the Court held a Patent Scheduling
Conference in Nashville, Tennessee. (ECF No. 71.) On August 25, 2017, the parties jointly
proposed a scheduling order, and on August 31, 2017, the Court entered a scheduling order
reflecting the proposal. (ECF No. 81).
On September 6, 2017, the Court held a Claim Construction Hearing in Nashville,
Tennessee. At the hearing, the Court heard arguments from both parties regarding
interpretation of the terms listed in the Joint Claim Construction Statement. (ECF No. 30.)
II.

LEGAL STANDARDS

“In conducting an infringement analysis, a court must first determine the meaning of any
disputed claim terms and then compare the accused device to the claims as construed.”
Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1371 72 (Fed. Cir. 2014) (citing
Wavetronix LLC v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1354 (Fed. Cir. 2009)); accord
Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc). Regarding
the first step, claim construction is a question of law with “evidentiary underpinnings” to be
determined by the court. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835, 838
(2015); Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996)). Where terms or
phrases are “not commonly understood,” a court may make subsidiary findings of fact based

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on evidence extrinsic to the patent to assist the court in its task of claim interpretation. See
Teva Pharm., 135 S. Ct. at 837–38. These factual determinations precede the court’s ultimate
legal construction of the patent’s claims. Id.
A. Claims
Claim construction begins with the language of the claims themselves. Braintree
Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1354–55 (Fed. Cir. 2014) (citing Interactive
Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001)). Claim terms in
the patent “are generally given their ordinary and customary meaning, which 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.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1323 (Fed. Cir.
2015) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)).
This general rule has two known exceptions: (1) “when a patentee sets out a definition and
acts as his own lexicographer,” or (2) “when the patentee disavows the full scope of the claim
term either in the specification or during prosecution.” Hill-Rom Servs., Inc. v. Stryker Corp.,
755 F.3d 1367, 1371 (Fed. Cir. 2014) (quoting Thorner v. Sony Comput. Entm’t Am. LLC,
669 F.3d 1362, 1365 (Fed. Cir. 2012)). Where a claim term has more than one “ordinary”
meaning, or when reliance on a term’s “ordinary” meaning does not resolve the parties’
dispute, a determination that a claim term “needs no construction” or has the “plain and
ordinary meaning” may be inadequate. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
521 F.3d 1351, 1361 (Fed. Cir. 2008).
“To determine the scope and meaning of a claim, we examine the claim language,
written description, prosecution history, and any relevant extrinsic evidence.” InTouch
Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1339 (Fed. Cir. 2014) (citing Phillips,
415 F.3d at 1315–19); Markman, 52 F.3d at 978-79.

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Apart from the claim language itself, the specification is the single best guide
to the meaning of a claim term. And while the prosecution history often lacks
the clarity of the specification, it is another established source of intrinsic
evidence. After considering these three sources of intrinsic evidence, a court
may also seek guidance from extrinsic evidence. However, extrinsic evidence
may be less reliable than the intrinsic evidence.
Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014) (citations and internal
quotation marks omitted).
B. Intrinsic Evidence
1. Specification
“The specification is fundamental to claim construction, as it is the single best guide to
the meaning of a disputed term.” Trading Techs. Int’l, Inc. v. Open E Cry, LLC, 728 F.3d
1309, 1319 (Fed. Cir. 2013) (quoting Phillips, 415 F.3d at 1315). In determining the meaning
to be given to claim terms, a court must read the terms in the context of the specification as it
is the patent specification which, by statute, must contain a “full, clear, concise, and exact”
description of the invention. 35 U.S.C. § 112(a); accord Phillips, 415 F.3d at 1311.
Consequently, “claim terms must be construed in light of the specification and prosecution
history, and cannot be considered in isolation.” GE Lighting Sols., 750 F.3d at 1308-09
(citing Phillips, 415 F.3d at 1313).
Although claim terms are normally given their ordinary and customary meaning, a
patentee may depart from this rule by acting as his own lexicographer or by disavowing the
claim scope in the specification. Phillips, 415 F.3d at 1316. “Idiosyncratic language, highly
technical terms, or terms coined by the inventor are best understood by reference to the
specification.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1321 (Fed. Cir.
2013) (citing Phillips, 415 F.3d at 1315–16). To use a special definition of a claim term, the
patentee must “clearly” redefine the term and have an “express intent” to do so within the
patent. Thorner, 669 F.3d at 1365–66; Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc., 214
F.3d 1302, 1307 (Fed. Cir. 2000).
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Courts must “not read limitations from the embodiments in the specification into the
claims.” Hill-Rom, 755 F.3d at 1371 (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 904 (Fed. Cir. 2004)). This requirement prevents a court from limiting the scope of the
claims to only the preferred embodiment or specific examples disclosed in the specification.
Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014) (“[I]t is
improper to read limitations from a preferred embodiment described in the specification—
even if it is the only embodiment—into the claims absent a clear indication in the intrinsic
record that the patentee intended the claims to be so limited.” (quoting Liebel-Flarsheim, 358
F.3d at 913)). “If the intrinsic record supports several definitions of a term, the term may be
construed to encompass all such consistent meanings . . . . Therefore, absent a clear disavowal
or alternative lexicography by a patentee, he or she ‘is free to choose a broad term and expect
to obtain the full scope of its plain and ordinary meaning.’” Wasica Fin. GmbH v. Cont'l
Auto. Sys., Inc., No. 2015-2078, 2017 WL 1228579, at *7 (Fed. Cir. Apr. 4, 2017) (internal
citations omitted). “By the same token, the claims cannot ‘enlarge what is patented beyond
what the inventor has described in the invention.’” Abbott Labs. v. Sandoz, Inc., 566 F.3d
1282, 1288 (Fed. Cir. 2009) (quoting Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1140
(Fed. Cir. 2003)).
2. Prosecution History
“A court should also consider the patent’s prosecution history, if it is in evidence. The
prosecution history consists of the complete record of the proceedings before the [U.S. Patent
and Trademark Office].” InTouch Techs., 751 F.3d at 1341 (citations and internal quotation
marks omitted). “[P]rosecution 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.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1350 (Fed. Cir. 2013)
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(alteration in original) (quoting Phillips, 415 F.3d at 1317). A court “does not 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, 725 F.3d at 1322 (citing Trading Techs. Int’l, Inc. v. eSpeed,
Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010)).
C. Extrinsic Evidence
“Although it is less significant than intrinsic evidence, a court can consider extrinsic
evidence in the record, which ‘consists of all evidence external to the patent and prosecution
history, including expert and inventor testimony, dictionaries, and learned treatises.’”
Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 709 F.3d 1348, 1355 (Fed. Cir. 2013)
(quoting Phillips, 415 F.3d at 1317). Although such evidence is generally considered less
reliable than the intrinsic record, a court is free to consider it and may do so at any stage of its
inquiry. Phillips, 415 F.3d at 1317-19. A court may rely on extrinsic evidence so long as the
evidence does not contradict the intrinsic record. Advanced Fiber Techs. (AFT) Trust v. J &
L Fiber Servs., Inc., 674 F.3d 1365, 1374–75 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at
1319).
III.

ANALYSIS
A. The Disputed Claims
The parties agree as to the meaning of “back” in claim 21. (ECF No. 30 at PageID

86.) They dispute terms in seven claims of the ‘464 patent; those claims are listed below, with
the disputed language underlined.
1. Claim 1
A work holding device, comprising:
a first jaw piece having an elongated first connection member for connecting the work
holding device to a support, the first connection member defining a first passage, the first
connection member being configured as a generally square elongated tube shaped for
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mounting in a receiver hitch of a vehicle, the first connection member having a first end at the
first jaw piece and a second end;
a second jaw piece having an elongated second connection member positionable
within the first passage and defining a second passage in communication with the first
passage, the second connection member having a first end at the second jaw piece and a
second end opposite the first end, the second passage being in communication with the first
passage at the second end of the second connection member; and
a spindle assembly movably connecting the second jaw piece to the first jaw piece, the
spindle assembly configured to move the second jaw piece with respect to the first jaw piece
to create a clamping pressure when an object is placed between the first jaw piece and the
second jaw piece, the second end of the second connection member being enclosed within the
first connection member regardless of the position of the second jaw relative to the first jaw.
2. Claim 3
The work holding device of claim 1, further comprising:
a recess defined within the first jaw piece forming a handle.
3. Claim 8
A portable work holding device, comprising:
a stationary first jaw piece having a casting and an elongated first connection member
extending from the casting, the first connection member defining a first passage, the elongated
first connection member being shaped to fit into and be supported in a receiver hitch of a
vehicle;
a movable second jaw piece having an elongated second connection member
extending from the second jaw piece, the second connection member positionable within the
first passage to couple the second jaw piece to the first jaw piece, the second connection
member defining a second passage in communication with the first passage with the second
connection member positioned within the first passage; and
a spindle assembly movably connecting the second jaw piece to the first jaw piece, the
spindle assembly comprising:
a spindle nut positioned within at least the first passage, the spindle nut
forming a helical thread on an inner surface of the spindle nut along at least a portion
of a length of the spindle nut between a first end and a second end of the spindle nut;
and
a spindle forming a helical thread on an outer surface of the spindle along at
least a portion of a length of the spindle cooperating with the helical thread formed on
the inner surface of the spindle nut to facilitate translation of the second jaw piece with
respect to the first jaw piece along an axis defined by the spindle.
4. Claim 12
The portable work holding device of claim 8, further comprising
a handle coupled to the spindle and configured to be fixed in a locked position.
5. Claim 21
The portable work holding device of claim 8, wherein
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the first jaw piece defines a cored-out back section to reduce weight and provide a
handle to facilitate moving the work holding device, the cored-out back section being centered
on the first jaw piece.
6. Claim 23
A portable work holding device assembly, comprising:
a work holding device, comprising:
a first jaw piece having an elongated connection member for connecting the
work holding device to a support, the elongated connection member including a
generally square elongated tube that is shaped and configured to fit into a receiver
hitch of a vehicle;
a second jaw piece; and
a spindle assembly movably connecting the second jaw piece to the first jaw
piece, the spindle assembly comprising a threaded spindle rotatable to move the
second jaw piece with respect to the first jaw piece; and
a plate assembly comprising:
a member including a plurality of walls defining a passage having a
complementary cross-section to receive the elongated connection member; and
one or more brackets coupled to a corresponding wall of the plurality of walls
of the member, the one or more bracket each defining one or more apertures to
facilitate coupling the work holding device to a support surface.
7. Claim 24
A method of assembling a work holding device, said method comprising:
providing a stationary first jaw piece having a casting and an elongated first
connection member extending from the casting, the first connection member defining a first
passage;
positioning an elongated second connection member of a movable second jaw piece
within the first passage, the elongated second connection member having a first end at the
second jaw piece and a second end opposite the first end, the second connection member
defining a second passage, the second passage being in communication with the first passage
at the second end of the second connection member; and
positioning a spindle assembly within the first passage and the second passage, the
spindle assembly movably coupling the second jaw piece to the first jaw piece.

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B. The Disputed Terms:
1. “a second passage in communication with the first passage”
Claim term

Claim

JPW’s Proposed
Construction

OTI’s Proposed Construction

“the second passage being in 1
communication with the first
passage at the second end of
the second connection
member”

“a second passage open to the first
passage”

The second end of the second
connection member terminates
inside the first connection
member, and is generally open to
the inside of the first connection
member.

“the second connection
member defining a second
passage in communication
with the first passage with
the second connection
member positioned within
the first passage”

“a second passage open to the first
passage”

8

“the second passage being in 24
communication with the first
passage at the second end of
the second connection
member”

JPW contends that the remaining
portions of the claim term do not
require construction and should be
interpreted according to their plain
and ordinary meaning.

JPW contends that the remaining
portions of the claim term do not
require construction and should be
interpreted according to their plain
and ordinary meaning.
“a second passage open to the first
passage”
JPW contends that the remaining
portions of the claim term do not
require construction and should be
interpreted according to their plain
and ordinary meaning.

“The second end of the second
connection member terminates
inside the first connection
member, and is generally open to
the inside of the first connection
member.”

“The second end of the second
connection member terminates
inside the first connection
member, and is generally open to
the inside of the first connection
member.”

OTI argues that the Court should read additional words into the claim term in
accordance with the ‘464 Patent’s prosecution history. (Def.’s Opening Claim Construction
Br., ECF No. 35 at PageIDs 115-16.) OTI also contents that intrinsic evidence in the
specification and prosecution history supports their construction. (Id. at PageIDs 116-120.)
JPW argues that the term’s plain meaning is supported by the specification,
prosecution history, and dictionary definitions. (JPW’s Opening Claim Construction Brief,
ECF No. 36 at PageIDs 261-65.) JPW also argues that OTI’s proposed construction violates
several tenets of claim construction: reading limitations out of claims, ignoring prosecution
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history, eliminating differences in claim language, and interpreting claims with ambiguous
terms. (Id. at PageIDs 265-68.)
After reviewing the arguments and record, the Court has determined that the term “in
communication with” means “open to,” and that the remaining claim terms hold their plain
and ordinary meanings. First, OTI’s proposed construction limits claims 1, 8, and 24 to
configurations where the second connection member “terminates inside the first connection
member.” This reading, however, ignores the applicant’s use of different terms in claim 8
from claims 1 and 24. The Court must give effect to all claim terms when possible. Merck &
Co., Inc., v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2002). Adopting OTI’s
proposal would read out the limitation “positioned within the first passage” in claim 8.
Accordingly, OTI’s proposal is an incorrect interpretation of the term based on the language
of the claims themselves.
Further, OTI seeks to interpret the term “in communication with” to mean “generally
open to the inside of.” The term “in communication with” is ambiguous. The specification
uses the same definition to describe the components’ spatial relationship. (E.g., ‘464 Patent,
col. 3, lines 37-46.) The drawings do not otherwise limit, interpret, or otherwise shed light on
the claim term’s meaning. (See ‘464 Patent, Figures 1-2, 5. Turning to the prosecution
history, the applicants argued that the cited prior art failed to teach the term “open to” because
it failed to teach a configuration wherein the second passage was “open to” the first passage.
(‘464 Patent Amendment A, ECF No. 35-6 at PageIDs 219-220.) This reflects that the
applicants understood the term “in communication with” to mean “open to.” OTI’s reading of
the prosecution history unnecessarily assigns additional words to applicants’ own definition.
For that reason, OTI’s reading is incorrect. JPW’s construction, conversely, does not read in

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additional terms and reflects the applicants’ own definition of the claims during prosecution.
In accordance with the intrinsic evidence, the Court adopts JPW’s construction.
2. “a recess defined within the first jaw piece forming a handle”
Claim term
“a recess defined within the
first jaw piece forming a
handle”

Claim
3

JPW’s Proposed
Construction

OTI’s Proposed Construction

Plain and ordinary meaning. E.g.,
“an opening within the first jaw
piece for safe holding.”

The “forming a handle” language
is non-limiting intended
use/result.

OTI argues that the term “handle” is not a structural limitation, but instead recites an
intended use of the device. (ECF No. 35 at PageIDs 120-23.) OTI’s argument relies on
USPTO interpretations of apparatus terms, as well as the ‘464 Patent’s prosecution history,
because the applicants did not dispute that the prior art’s non-handle “recess” met the claim
term. (Id.)
JPW argues that the claim term should be interpreted according to its plain and
ordinary meaning, including that “handle” is a structural limitation rather than intended use
language. (ECF No. 36, PageIDs 268-70.) JPW further argues that “handle” limits the scope
of the claims because the term “‘recites essential structure’ and provides a fundamental
characteristic of the claim” related to the device’s portability. (Id.) JPW also argues that the
term “handle” differentiates the specific recess used to carry the device from other recesses
that could not be used as handles, and that the distinction is a “fundamental structural
characteristic” of the recess recited in claim 3. (Id.)
The Court has determined that “handle” reflects intended use, not a structural
limitation. Considering first the claim language itself, the term “handle” in claim 3 could
either recite an additional structural feature or describe an intended use of other structural
features. Turning next to the specification and drawings, the disclosure does not use the term
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“handle” in reference to a particular structure or component of the device. Moreover, the
specification describes a “cored-out back section” (104 in the specification and drawings) that
“provides a handle feature.” (‘464 Patent, col. 5, lines 37-38.) Neither the specification nor
the drawings reveal which component(s) form that handle. Looking to the illustrative
embodiments in Figures 2 and 5, the cored-out back section 104 is bordered by several walls,
any one of which could be gripped as a handle. The disclosure does not, however, specify
which of the several walls, if any, is the “handle.” Accordingly, JPW’s proposed
interpretation might raise enablement or written description issues under 35 U.S.C. § 112.
Interpreting the claim term according to OTI’s proposal avoids those possible issues. For the
foregoing reasons, the Court finds the term “forming a handle” to be non-limiting intended
use language, and adopts OTI’s proposed interpretation of the claim term.
3. “a handle coupled to the spindle and configured to be fixed in a
locked position”
Claim term
“a handle coupled to the
spindle and configured to be
fixed in a locked position”

Claim
12

JPW’s Proposed
Construction

OTI’s Proposed Construction

Plain and ordinary meaning. E.g.,
“a handle connected to the spindle
that is able to be fixed in a locked
position.”

The handle is always rotationally
fixed relative to the spindle, and
can be moved to a locked position
where the spindle cannot be
rotated to move the jaws relative
to one another. In the alternative,
this term cannot be construed and
is indefinite because one of
ordinary skill in the art cannot
determine what is regarded as the
invention, or because there is no
written support.

OTI argues that the Court should read the claim term commensurate with the
embodiment illustrated in the drawings, on the ground that no other configurations are
supported. (ECF No. 35 at PageIDs 123-26.)
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JPW argues that the Court should adopt the claim term’s plain and ordinary meaning.
(ECF No. 36 at PageIDs 270-72.) With respect to the handle’s attachment to the spindle, JPW
argues that OTI’s proposed construction would impermissibly limit the scope of the claim to
an illustrated embodiment. (Id. at PageID 271) With respect to the handle’s locking
configuration, JPW argues that OTI’s proposed construction contradicts the disclosure. (Id. at
PageIDs 271-72.)
The Court has determined that claim 12 should be interpreted to mean “a handle
fixedly mounted to the spindle and able to be fixed in a locked rotational position.” With
respect to the handle’s attachment to the spindle, the word “coupled” as used in claim 12 is
ambiguous. As OTI’s brief notes, “coupled” could mean either fixedly attached or slideable
relative to the spindle, as in tabletop vises. (ECF No. 35 at PageID 124.) Turning to the
disclosure, its description of the handle (numeral 80) and its configuration references Figures
1-4. (‘464 Patent, col. 4, lines 48-50.) The specification provides: “handle 80 includes a
socket head 82 seated on one or more socket head cap screws 84 mounted to second jaw piece
30,” (id., col. 4, lines 64-66), and that handle 80 is set “at a fixed terminal point 100 in the
locked position”. (Id., col. 5, lines 33-34.) Figures 1-3 show the handle 80 fixedly mounted
to the second jaw piece 30, with the secured end of handle 80 being mounted in socket head
82, adjoining second end 60 of spindle 52, such that the unsecured end of handle 80 forms
fixed terminal point 100. (col. 5, lines 29-31). The ‘464 Patent disclosure thus establishes
that Onello and Weber conceived and disclosed of a device where the handle was fixedly
mounted to the spindle. The disclosure does not, however, establish conception or possession
of other handle/spindle attachment configurations. It is not clear that the inventors conceived
of an invention as recited in claim 12 where “coupled” meant anything other than “fixedly
mounted” at the time the application was filed. As a result, interpreting the term with broader

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scope would invite enablement or written description issues under 35 U.S.C. § 112. The
Court must avoid reading the disclosure into the claims; in the instant case, however, the
disclosure sheds light on the meaning of “coupled” in the claim term, and “coupled” in the
context of the claim means “fixedly mounted.” Accordingly, the Court interprets “coupled” to
mean “fixedly mounted.”
With respect to the handle’s configuration, the term “configured to be fixed in a locked
position” is readily understood according to those words’ plain meanings. The term does not,
however, specify a direction, axis, or plane along which the handle’s movement is fixed.
Turning to the specification, the ‘464 Patent describes the handle (80) as being rotatable and
lockable “about axis 62,” which is the lengthwise axis of the device. ‘464 Patent, col. 4, lines
58-64. Accordingly, claim 12 is correctly read to recite a handle “able to be fixed in a locked
rotational position.”
4. “the first jaw piece defines a cored-out back section to reduce
weight and provide a handle to facilitate moving the work holding
device, the cored-out back section being centered on the first jaw
piece”
Claim term
“a first jaw piece defines a
cored-out back section to
reduce weight and provide a
handle to facilitate moving
the work holding device, the
cored-out section being
centered on the first jaw
piece”

Claim
21

JPW’s Proposed
Construction
See “back.”
JPW contends that the remaining
portions of the claim term do not
require construction and should be
interpreted according to their plain
and ordinary meaning.

OTI’s Proposed Construction
The “to reduce weight and
provide a handle to facilitate
moving the work holding device”
language is nonlimiting intended
use/result.

OTI applies the same arguments to claim 21 as they do to claim 3. With respect to
claim 21, OTI further argues that the term “reduce weight” cannot be given its plain and
ordinary meaning because it is “hopelessly vague.” (ECF No. 35 at PageIDs 120-23.)

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JPW argues that the words should be given their plain and ordinary meaning because
they recite additional structure, and that OTI’s arguments ignore the intrinsic evidence. (ECF
No. 36 at PageIDs 272-74.)
The Court has determined that the term means “a first jaw piece defines a cored-out
back section to reduce weight, the cored-out section being centered on the first jaw piece,”
with the additional terms reflecting intended use. The term “provide a handle to facilitate
moving the work holding device” in claim 21 is non-limiting for the same reason that the
Court found the term “handle” in claim 3 to be non-limiting: the term itself is ambiguous and
the specification does not resolve the ambiguity. The phrase “to reduce weight” is, however,
a structural limitation. Although the phrase does not recite additional structural components,
it limits the physical features of the device: the device must have reduced weight compared to
a device without the cored-out back section. For that reason, “to reduce weight” is a structural
limitation.
5. “a member having a plurality of walls defining a passage having a
complementary cross-section to receive the elongated connection
member”
Claim term
“a member having a
plurality of walls defining a
passage having a
complementary crosssection to receive the
elongated connection
member”

Claim
23

JPW’s Proposed
Construction
Plain and ordinary meaning.

OTI’s Proposed Construction
The complementary cross-section
is a generally square, closed
shape.

OTI argues that the term should be interpreted according to the embodiment illustrated
in Figure 9 of the disclosure. (ECF No. 35 at PageIDs 126-27.)

Page 16

JPW argues that the terms should be given their plain and ordinary meaning, and that
OTI’s proposal unreasonably imports limitations from the specification’s illustrative
embodiment. (ECF No. 36 at PageIDs 274-75.)
The Court has determined that the term should be interpreted according to its plain and
ordinary meaning. The claim language is not ambiguous, so it is unnnecessary to go beyond
the language itself to ascertain its meaning. Even if the claim language were ambiguous, in
the instant case the specification supports JPW’s proposal because it uses the generic language
of the claims rather than the specific language OTI proposes. (‘464 Patent, col. 5, line 63-col.
6, line 9.) In the instant case, there is no reason to read the limitations of an illustrative
embodiment into the claims. SciMedLife Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
242 F.3d 1337, 1340 (Fed. Cir. 2001) (referring to unnecessary reading of specification
limitations into the claim terms as “one of the cardinal sins of patent law”).

IT IS SO ORDERED, this 5th day of October, 2017.
/s/ Jon P. McCalla
JON P. McCALLA
UNITED STATES DISTRICT COURT JUDGE

Page 17

Summary of Claim Terms and Constructions
Claim Term

Claim

“the second
passage being in
communication
with the first
passage at the
second end of the
second connection
member”

1

“a recess defined
within the first
jaw piece forming
a handle”

3

“the second
connection
member defining
a second passage
in communication
with the first
passage with the
second connection
member
positioned within
the first passage”

8

“a handle coupled
to the spindle and
configured to be
fixed in a locked
position”

12

JPW’s Proposed
Construction
“a second passage
open to the first
passage”
JPW contends that
the remaining
portions of the claim
term do not require
construction and
should be interpreted
according to their
plain and ordinary
meaning.
Plain and ordinary
meaning. E.g., “an
opening within the
first jaw piece for
safe holding.”
“a second passage
open to the first
passage”
JPW contends that
the remaining
portions of the claim
term do not require
construction and
should be interpreted
according to their
plain and ordinary
meaning.
Plain and ordinary
meaning. E.g., “a
handle connected to
the spindle that is
able to be fixed in a
locked position.”

OTI’s Proposed
Construction

Court’s
Construction
The second end of the “the second passage
second connection
open to the first
member terminates
passage at the
inside the first
second end of the
connection member,
second connection
and is generally open
member.”
to the inside of the
first connection
member.

The “forming a
handle” language is
non-limiting intended
use/result.

The term “forming a
handle” is nonlimiting intended
use.

“The second end of
the second
connection member
terminates inside the
first connection
member, and is
generally open to the
inside of the first
connection member.”

“the second
connection member
defining a second
passage open to the
first passage with the
second connection
member positioned
within the first
passage.”

The handle is
always rotationally
fixed relative to the
spindle, and can be
moved to a locked
position where the
spindle cannot be
rotated to move the
jaws relative to one
another. In the
alternative, this
term cannot be
construed and is
indefinite because
one of ordinary

“a handle fixedly
mounted to the
spindle and able to
be fixed in a locked
rotational position.”

Page 18

skill in the art
cannot determine
what is regarded as
the invention, or
because there is no
written support.
“a first jaw piece
defines a coredout back section
to reduce weight
and provide a
handle to facilitate
moving the work
holding device,
the cored-out
section being
centered on the
first jaw piece”
“a member having
a plurality of
walls defining a
passage having a
complementary
cross-section to
receive the
elongated
connection
member”
“the second
passage being in
communication
with the first
passage at the
second end of the
second connection
member”

21

See “back.”
JPW contends that
the remaining
portions of the claim
term do not require
construction and
should be interpreted
according to their
plain and ordinary
meaning.

The “to reduce
weight and provide a
handle to facilitate
moving the work
holding device”
language is
nonlimiting intended
use/result.

“a first jaw piece
defines a cored-out
back section to
reduce weight, the
cored-out section
being centered on
the first jaw piece.”

23

Plain and ordinary
meaning.

The complementary
cross-section is a
generally square,
closed shape.

Plain and ordinary
meaning.

24

“a second passage
open to the first
passage”
JPW contends that
the remaining
portions of the claim
term do not require
construction and
should be interpreted
according to their
plain and ordinary
meaning.

“The second end of
the second
connection member
terminates inside the
first connection
member, and is
generally open to the
inside of the first
connection member.”

“the second passage
open to the first
passage at the
second end of the
second connection
member.”

Page 19