iFLY Holdings LLC vs. INDOOR SKYDIVING GERMANY GMBH
Filing
111
MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 12/17/2015. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
iFLY HOLDINGS LLC,
Plaintiff,
v.
INDOOR SKYDIVING GERMANY GMBH,
Defendant.
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Case No. 2:14-CV-1080-JRG-RSP
MEMORANDUM OPINION AND ORDER
On September 30, 2015, the Court held a hearing to determine the proper construction of
the disputed claim terms in United States Reissued Patent No. RE43,028 (“the ’028 Patent”).
After considering the arguments made by the parties at the hearing and in the parties’ claim
construction briefing (Dkt. Nos. 45, 55, and 59), the Court issues this Claim Construction
Memorandum and Order.
Page 1 of 46
TABLE OF CONTENTS
I.
BACKGROUND ................................................................................................................ 3
II.
APPLICABLE LAW .......................................................................................................... 6
III.
CONSTRUCTION OF DISPUTED TERMS ..................................................................... 9
1. “vertical wind tunnel amusement device” ................................................................. 9
2. “chamber for containing an airflow” ....................................................................... 16
3. “staging area” ........................................................................................................... 21
4. “a fan whereby an airflow is induced” ..................................................................... 26
5. “aerodynamically communicating” ......................................................................... 32
6. “said chamber having a width” ................................................................................ 39
7. “said airflow being substantially constant across the width of the chamber”.......... 42
IV.
CONCLUSION ................................................................................................................. 46
Page 2 of 46
I.
BACKGROUND
On September 23, 1998, the patentees filed provisional Application No. 09/159,369 (“the
Provisional Application”). On June 2, 1999, the patentees filed a continuation-in-part
application, Application No. 09/324,282 (the “CIP Application”), adding new matter to the
specification and amending the claims of the Provisional Application. (Dkt. No. 55 at 6.) The
patentees also amended the title from “Vertical Wind Tunnel Amusement Device” to “Vertical
Wind Tunnel Training Device.” (Id.)
On July 4, 2000, the CIP Application issued as U.S. Patent No. 6,083,110 (“the ’110
Patent”). (Id.) On July 3, 2002, the patentees filed a reissue application, Application No.
10/189,698, seeking to enlarge the scope of the claims of the ’110 Patent. (Id. at 6-7.) During the
prosecution of the reissue application, the patentees added new claims and amended other
claims. (Id.) The reissue application was allowed on September 8, 2011, and issued as the ’028
Patent on December 13, 2011. (Id.) As indicated, the ’028 Patent is a continuation-in-part to of
the Provisional Application filed on September 23, 1998.
The ’028 Patent generally relates to a vertical wind tunnel device configured to allow a
user to experience “freefall” within a vertical airflow column. See ’028 Patent at Abstract. 1
1
The Abstract of the ’028 Patent follows:
The present invention is a vertical wind tunnel amusement device. The device
comprises a flight chamber wherein a user may experience a freefall through the
atmosphere from the safety of an enclosed flight chamber. Airflow sufficient to
fully support a user within the flight chamber is induced by a plurality of fans
connected above the flight chamber through a duct. A staging area having
openings to the flight chamber is adjacent to the flight chamber. A user may enter
or retreat from the flight chamber at will through the staging area openings
without significantly adjusting the airflow velocity in the flight chamber. A
control room is adjacent to the fight chamber whereby an operator may observe a
user or users within the flight chamber and thereby safely control the operation of
the fans. A projection room is also adjacent to the flight chamber whereby a video
of a skydiving experience may be displayed to a user within the flight chamber. A
telemetry backpack may be worn by a user or users in the flight chamber so the
user can interact with or choose the scenes being projected on the flight chamber.
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Figure 2 of the ’028 Patent illustrates an exemplary embodiment of the vertical wind tunnel.
Id. at Figure 2 (annotated). 2 The specification states that “airflow is induced through the flight
chamber by a plurality of fans located above, i.e. downstream of, the flight chamber.” Id. at
3:21–23. The specification discloses that the flow path begins at the inlet contraction where
“[a]mbient air is drawn into the inlet contraction starting with essentially zero velocity.” Id. at
In alternate embodiment, return air ducts are used to return air from each fan to
the wind tunnel inlet. Dampers are included on each return air duct thereby
allowing the temperature of the airflow in the wind tunnel to be adjusted for user
comfort.
2
The annotated figure includes labels, color coding, and a “staging area” that were added by
Plaintiff for clarity. (Dkt. No. 45 at 7.) The specification states that the vertical wind tunnel
includes an inlet contraction (purple) connected to the lower end of the flight chamber (blue).
’028 Patent at 5:25–26. The specification further states that a diffuser (green) is connected above
the flight chamber (blue). Id. at 5:26–27. The specification also states that adjacent to the flight
chamber is a staging area. Id. at 3:50–51. The specification further describes the flight chamber
as having a floor mesh and a perforated section. Id. at 3:37–38, 4:1–14.
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3:33–35. The specification adds that “[t]he inlet contraction is aerodynamically designed to
allow the incoming airflow to be accelerated to the optimum velocity with as little turbulence as
possible.” Id. at 3:35–37.
The specification continues that “[t]he airflow then passes through a floor mesh into the
flight chamber.” Id. at 3:38–39. The specification states that “[t]he airflow velocity in the flight
chamber is approximately 120+ mph, which will fully support a user.” Id. at 3:41–43. The
specification discloses that the diffuser, located above the flight chamber, has an increasing
cross-sectional area that “reduces the velocity of the airflow from the flight chamber to the fans.”
Id. at 4:16–17. The specification further discloses that “[t]he velocity of the airflow through the
invention is controlled by either changing the pitch of the fans or by changing the rotational
speed of the fans.” Id. at 4:18–20.
Regarding the flight chamber, the specification states that it “has a constant cross-section
along its length,” and “experiences the maximum airflow velocity in the airflow path and,
therefore, the greatest aerodynamic stress.” Id. at 6:35–39. The specification adds that the
preferred embodiment of the flight chamber has ten sides, with two of the sides providing an
opening from the staging area that allows a user to enter and exit the flight chamber. Id. at 7:20–
26. The specification further states that a user may fly in the flight chamber for a given amount
of time before exiting back into the staging area via the opening. Id. at 7:47–50. The
specification also discloses that the flight chamber has a floor mesh designed to allow the air to
flow through the flight chamber with minimal frictional loses. Id. at 10:12–14. The specification
adds that the floor mesh provides support for the user and is designed to decrease the chance of
injury if a user should fall. Id. at 10:10–14.
Plaintiff alleges that Defendant infringes claims 1, 2, 3, 12-16, 18, 19, 21, 22, 28-30, 43,
and 44 of the ’028 Patent. Claim 1 of the ’028 Patent is exemplary and recites the following
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elements (disputed term in italics):
1. A vertical wind tunnel amusement device comprising:
a chamber for containing an airflow;
a fan whereby an airflow is induced in said chamber; said fan
communicating with said chamber by a duct;
a staging area forming an outer chamber adjacent to said
chamber,
said
staging
area
aerodynamically
communicating with said chamber;
an opening aerodynamically communicating with said chamber;
and
an upper section comprising perforations above said opening
and between said staging area and said chamber whereby
said staging area further aerodynamically communicates
with said chamber.
II.
APPLICABLE LAW
A. Claim Construction
“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.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. See id. at 1313. C.R. Bard, Inc. v. U.S. Surgical Corp.,
388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group,
Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims
themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R.
Bard, Inc., 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as
understood by one of ordinary skill in the art at the time of the invention in the context of the
entire patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361,
1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of
particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
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can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own
terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
lexicography governs. Id. The specification may also resolve ambiguous claim terms “where the
ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to
permit the scope of the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at
1325. But, “‘[a]lthough the specification may aid the court in interpreting the meaning of
disputed claim language, particular embodiments and examples appearing in the specification
will not generally be read into the claims.’” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d
1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. The prosecution history is another
tool to supply the proper context for claim construction because a patent applicant may also
define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352,
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1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent applicant may define a term
in prosecuting a patent.”).
Although extrinsic evidence can be useful, it is “‘less significant than the intrinsic record
in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
understand the underlying technology and the manner in which one skilled in the art might use
claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
testimony may aid a court in understanding the underlying technology and determining the
particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id.
B. Construction Indefiniteness
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112 ¶ 2. Whether a claim meets this definiteness requirement is a
matter of law. Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007). A party challenging
the definiteness of a claim must show it is invalid by clear and convincing evidence. Takeda
Pharm. Co. v. Zydus Pharms. USA, Inc., 743 F.3d 1359, 1368 (Fed. Cir. 2014). The ultimate
issue is whether someone working in the relevant technical field could understand the bounds of
a claim. Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 783 (Fed. Cir. 2010).
Specifically, “[a] patent is invalid for indefiniteness if its claims, read in light of the specification
delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those
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skilled in the art about the scope of the invention.” Nautilus Inc. v. Biosig Instruments, Inc., 134
S. Ct. 2120, 2124 (2014).
III.
CONSTRUCTION OF AGREED TERMS
The parties agreed to the constructions of the following terms:
Claim Term/Phrase
“perforations”
Agreed Construction
plain and ordinary meaning
“whereby each of said cables is
preloaded”
plain and ordinary meaning
Dkt. No. 55 at 19, 34. In view of the parties’ agreement on the proper construction of the
identified terms, the Court hereby ADOPTS the parties’ agreed constructions.
IV.
CONSTRUCTION OF DISPUTED TERMS
The parties’ dispute focuses on the meaning and scope of seven terms/phrases in the ’028
Patent.
1. “vertical wind tunnel amusement device”
Disputed Term
“vertical wind tunnel
amusement device”
Plaintiff’s Proposal
“vertical wind tunnel for
simulating skydiving by
supporting a person in an
airflow”
Defendant’s Proposal
Preamble and does not require
construction.
a) The Parties’ Positions
The parties dispute whether the preamble phrase “vertical wind tunnel amusement
device” limits the claims. Plaintiff argues that the preamble limits the claims because: (1) the
entirety of the patent reveals that the structure recited in the preamble is a part of the invention;
(2) the preamble provides antecedent basis to other limitations in the body of the claim; and (3)
the patentees used the preamble to distinguish prior art. (Dkt. No. 45 at 12.) Specifically,
Plaintiff argues that simulating skydiving is the primary objective of the invention. (Id.) (citing
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’028 Patent at 4:31–34, 1:36–57, 7:32–55, 8:35–37). Plaintiff contends that the invention
accomplishes this objective by supporting a skydiver in an airflow within the wind tunnel. (Id.)
(citing ’028 Patent at Abstract, 8:30–32). According to Plaintiff, the “vertical wind tunnel
amusement device” must support a person in an airflow, or else it would not accomplish the
primary objective of the invention. (Id.)
Plaintiff further argues that the specification repeatedly underscores the invention as a
“vertical wind tunnel amusement device.” (Id. at 13) (citing ’028 Patent at Abstract, 1:17–19,
2:55–56, 2:37–51, 8:35–37). Plaintiff contends that it is evident that the inventors were working
on the particular problem of designing a vertical wind tunnel “for general amusement purposes.”
(Id. at 14) (citing ’028 Patent at 1:45–46). Plaintiff further argues that the title of the patent, the
Summary of the Invention, and the preferred embodiments make it clear that the invention is a
“vertical wind tunnel amusement device.” (Id.)
Plaintiff also argues that the preamble is limiting because the body of claim 39 refers to
“the wind tunnel” in two separate instances. (Id.) Plaintiff further contends that the inventors
relied on the features recited in the preamble to distinguish the invention from prior art. (Id. at
15) (citing ’028 Patent at 1:30–57, 2:37–51). Plaintiff argues that prior art wind tunnels lacked
the features necessary for purposes of an amusement device. (Id.) (citing ’028 Patent at 1:43–
46).
Defendant responds that the term “vertical wind tunnel amusement device” describes a
structure with an intended use. (Dkt. No. 55 at 9.) Defendant argues that preambles describing
the use of an invention generally do not limit the claims because the patentability of apparatus or
composition claims depends on the claimed structure, not on the use or purpose of that structure.
(Id.) In other words, Defendant argues that the body of the claims stand alone in defining the
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structural limitations of the “wind tunnel amusement device,” and the preamble serves no
purpose other than to state a use for the vertical wind tunnel. (Id. at 12.) Defendant further
contends that the preamble of claim 39 reads “[a] vertical wind tunnel device,” not “[a] vertical
wind tunnel amusement device.” (Id.) According to Defendant, there is no claim that relies on
the phrase “[a] vertical wind tunnel amusement device” for antecedent basis. (Id.) Defendant
contends that the patentees made no arguments during prosecution of the ’028 Patent or the ’110
Patent to show the patentees’ intent to limit the claims by incorporating the preamble. (Id. at 14.)
Defendant also argues that deletion of “amusement” from the preamble would have zero effect
on the structure or use of the claimed invention. (Id.)
Defendant further argues that the phrase “vertical wind tunnel amusement device” is not
used once in describing the preferred embodiment of the invention. (Id. at 10) (citing ’028 Patent
at 5:19–12:3). Defendant contends that if “amusement device” was critical to understanding the
full scope of the claims, the patentees would have used it at least once in its Description of the
Preferred Embodiment. (Id.)
Defendant further argues that Plaintiff’s construction must be rejected because it would
limit the claims to the preferred embodiment. (Id.) Defendant contends that when a patentee
describes his invention using a description of its structure, the implication is that the claim will
not be limited by reference to functions described in the specification. (Id. at 15.) Defendant
argues that all of the claims of the ’028 Patent are apparatus claims and that it would be improper
to incorporate functional limitations from the preferred embodiment into the claims. (Id.)
Finally, Defendant argues that the declaration and deposition testimony of Plaintiff’s expert, Mr.
Raymond Whipple, confirm that Plaintiff is trying to incorporate a functional limitation into the
apparatus claims. (Id. at 15-16.)
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Plaintiff replies that it is undisputed that the invention of the ’028 Patent is a “vertical
wind tunnel amusement device.” (Dkt. No. 59 at 4.) Plaintiff contends that what Defendant calls
an “intended use” is in fact the essence of the invention. (Id.) According to Plaintiff, designing
the vertical wind tunnel for skydiving is at the core of the invention, and other claim elements
would not make sense in the context of a wind tunnel not designed for simulating skydiving.
(Id.) Plaintiff notes, for example, that the specification is replete with references to skydiving,
and that each and every embodiment is described as simulating skydiving. (Id.)
Plaintiff argues that not limiting the claims to this fundamental characteristic would lead
to absurd results because the claims would be broadened to include wind tunnels which are
incapable of simulating skydiving. (Id.) Plaintiff argues that Defendant seeks this result in order
to include horizontal wind tunnels. (Id. at 5.) Plaintiff further points out that the phrase “vertical
wind tunnel amusement device” is used to describe the preferred embodiment. (Id.) (citing ’028
Patent at 8:17–19).
For the following reasons, the Court finds that the preamble limits the claims to “vertical
wind tunnels,” but does not limit the claims to the intended use of an amusement device “for
simulating skydiving by supporting a person in an airflow.”
b) Analysis
The phrase “vertical wind tunnel amusement device” appears in claims 1, 2, 3, 12-16, 18,
19, 21, 22, 28-30, 43, and 44 of the ’028 Patent. The Court finds that the phrase is used
consistently in the claims and is intended to have the same general meaning in each claim. The
Court further finds that the preamble is limiting when the phrase “vertical wind tunnel” appears
in it. A review of the specification finds that the ’028 Patent is directed only to vertical wind
tunnels. Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir.
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1989) (“The effect preamble language should be given can be resolved only on review of the
entirety of the patent to gain an understanding of what the inventors actually invented and
intended to encompass by the claim.”).
For example, the Field of the Invention section states that “[t]he present invention relates
to the field of vertical wind tunnels . . . .” ’028 Patent at 1:17–18. Likewise, the Summary of the
Invention section states that “[t]he primary aspect of the present invention is to provide a vertical
wind tunnel amusement device . . . .” Id. at 2:55–56. This section also repeatedly states that
“[a]nother aspect of the present invention is to provide a vertical wind tunnel amusement device
having . . . .” Id. at 2:59–3:13. The specification further states that “[t]he invention comprises a
single pass, non-return flow vertical wind tunnel amusement device having a flight chamber. It is
within the flight chamber where the user experiences ‘freefall’ within the vertical airflow
column.” Id. at 3:17–21. Thus, a person of ordinary skill in the art would find that the only wind
tunnels discussed are vertical wind tunnels. See, e.g., ’028 Patent at 2:37–51, 8:35–37, Figures 1,
2, 18, and 19. Indeed, the title of the ’028 Patent is “Vertical Wind Tunnel Training Device.”
In addition, the phrase “[a] vertical wind tunnel device,” as recited in the preamble of
claim 39, provides antecedent basis for the subsequent limitation of “an inlet contraction at a
base of the wind tunnel . . . thereby preventing the door from opening outward when the wind
tunnel is in operation.” Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir.
2003) (stating that “[w]hen limitations in the body of the claim rely upon and derive antecedent
basis from the preamble, then the preamble may act as a necessary component of the claimed
invention.”). Moreover, the other claim elements (e.g., “floor mesh”) seem only structurally
applicable to vertical wind tunnels. Finally, the prior art devices discussed in the Background of
the Invention section are all vertical wind tunnels. ’028 Patent at 1:36–57. Accordingly, the
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Court finds that the preamble limits the claims to “vertical wind tunnels.”
Turning to Plaintiff’s construction, the Court disagrees that the preamble further limits
the claims to the intended use of “for simulating skydiving by supporting a person in an airflow.”
All of the claims in the ’028 Patent are apparatus claims. It is well established that the preambles
for such claims generally are not limitations “because the patentability of apparatus or
composition claims depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
Here, in the context of a vertical wind tunnel, the body of the claim “sets out the complete
invention.” Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002). The
additional language proposed by Plaintiff is merely an intended use of the claimed vertical wind
tunnel and should not be read into the claims as an additional limitation.
Moreover, the language of “for simulating skydiving by supporting a person in an
airflow” does not appear in the preamble. Instead, the only words that appear in the preamble are
“amusement device.” Contrary to Plaintiff’s contention, “amusement device” does not provide
antecedent basis for any of the elements in the claims. Instead, as discussed above, it is the
phrase “[a] vertical wind tunnel device” that appears in the preamble of claim 39 that provides
antecedent basis for a subsequent limitation. Accordingly, the Court finds that the preamble
phrase “amusement device” merely states an intended use of the invention and does not limit the
scope of the claims. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006)
(“Preamble language that merely states the purpose or intended use of an invention is generally
not treated as limiting the scope of the claim.”).
Plaintiff argues that the patentees relied on the features recited in the preamble to
distinguish the invention from prior art. (Dkt. No. 45 at 15) (citing ’028 Patent at 1:30–57). The
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Court notes that Plaintiff’s disclaimer argument is based on general statements included in the
specification and not specific arguments made in the prosecution history. Phillips v. AWH Corp.,
415 F.3d 1303, 1316 (Fed. Cir. 2005) (“[T]he specification may reveal an intentional disclaimer,
or disavowal, of claim scope by an inventor.”). Notwithstanding, for a specification disclaimer to
arise “the specification [has to] make[] clear that the invention does not include a particular
feature . . . .” Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341
(Fed. Cir. 2001).
The Court finds that the specification does not clearly state that the claims should be
limited to an “amusement” device. At best, the specification generally criticizes the prior art for
not being available to the public or for not being “user friendly.” ’028 Patent at 1:36–57.
However, “[m]ere criticism of a particular embodiment encompassed in the plain meaning of a
claim term is not sufficient to rise to the level of clear disavowal. . . . To constitute disclaimer,
there must be a clear and unmistakable disclaimer.” Thorner v. Sony Computer Entm't Am. LLC,
669 F.3d 1362, 1366-1367 (Fed. Cir. 2012). Indeed, the specification states that prior art vertical
wind tunnels “are available for use by persons for various types of atmospheric freefall training.”
’028 Patent at 1:39–40. Accordingly, the Court finds that the preamble does not limit the claims
to the intended use of “for simulating skydiving by supporting a person in an airflow.”
Plaintiff also argues that when a limitation refers to the “essence of the invention,” it
limits the scope of the claim, even if it appears in the preamble. (Dkt. No. 59 at 6) (citing Vizio,
Inc. v. Int’l Trade Comm’n, 605 F.3d 1330, 1340-41 (Fed. Cir. 2010)). The Court agrees with
this statement of law. However, unlike the preamble term in Vizio, the proposed limitation of
“for simulating skydiving by supporting a person in an airflow” does not appear in the preamble
or anywhere in the claims. Therefore the facts in this case are distinguishable from those in Vizio
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where the “for decoding” limitation appeared in the preamble of the claims, and was not added
to the claims by a proposed construction. Vizio, 605 F.3d at 1340. As the Federal Circuit stated
in Vizio, “[a] preamble is not limiting ‘where a patentee defines a structurally complete invention
in the claim body and uses the preamble only to state a purpose or intended use for the
invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Finally, the Court
has considered the extrinsic evidence submitted by the parties, and given it its proper weight in
light of the intrinsic evidence.
c) Court’s Construction
In light of the evidence submitted by the parties, the Court finds that the preamble limits
the claims to “vertical wind tunnels,” but does not limit the claims to the intended use of an
amusement device “for simulating skydiving by supporting a person in an airflow.”
2. “chamber for containing an airflow”
Disputed Term
“chamber for containing
an airflow”
Plaintiff’s Proposal
Defendant’s Proposal
“area for simulated skydiving
Does not require construction,
by one or more persons
and therefore should be given
enclosed by walls wherein the
its plain and ordinary meaning.
high speed airflow extends from
wall to wall”
a) The Parties’ Positions
The parties dispute whether the phrase “chamber for containing an airflow” requires
construction. Plaintiff argues that its construction gives the phrase its plain and ordinary meaning
as understood by a person of skill in the art in light of the intrinsic record. (Dkt. No. 45 at 16.)
Plaintiff contends that the specification establishes that the invention comprises an enclosed
chamber for simulated skydiving where the high-speed airflow column extends to the walls of
the chamber. (Id.) (citing ’028 Patent at Abstract). Plaintiff further argues that for the airflow
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velocity profile to be relatively flat, the airflow must extend to the walls of the chamber. (Id.)
(citing ’028 Patent at 3:42–44, 5:39–43, 6:36–37). According to Plaintiff, a constant airflow
across the flight chamber would not be possible without having the airflow extend from wall-towall within the flight chamber. (Id. at 16-17.)
Plaintiff also contends that wind tunnels normally have a test section, that is, a portion of
the wind tunnel where the airflow reaches its maximum velocity and where objects are placed in
the airstream. (Id. at 17.) The area where people experience simulated skydiving forms the test
section in a vertical wind tunnel amusement device. (Id. at 17.) Plaintiff argues that in view of
the intrinsic evidence, one of skill in the art would understand a “chamber for containing an
airflow” to refer to a wind tunnel with a closed test section. (Id.) According to Plaintiff, to have
it otherwise would allow for a vertical wind tunnel having areas within the flight chamber where
no airflow is present. (Id.) Plaintiff argues that would fail to provide the control, stability, and
predictability that the invention of the ’028 Patent provides. (Id.) (citing ’028 Patent at 5:40–44,
2:55–58, 4:11–13, 6:67–7:2).
Defendant responds that the term “chamber for containing an airflow” is readily
understood by one of ordinary skill in the art, and should be given its plan and ordinary meaning.
(Dkt. No. 55 at 16.) Defendant argues that Plaintiff’s attempt to add the intended use of the wind
tunnel is unnecessary. (Id.) Defendant further argues that the additional limitation “enclosed by
walls wherein the high speed airflow extends from wall to wall” is not supported by the intrinsic
evidence. (Id.) Defendant contends that the term “wall to wall” is not found anywhere in the
specification. (Id.) Defendant further argues that the proposed limitation of “airflow extends
from wall to wall” is technically incorrect and would only confuse the claim term. (Id. at 17.)
Defendant also contends that Plaintiff’s construction further includes an inaccurate
Page 17 of 46
limitation for “high speed airflow.” (Id.) According to Defendant, vertical wind tunnels for spin
testing and skydiving simulations are actually in the category of “low speed” tunnels. (Id.)
Defendant argues that Plaintiff’s use of the word “high speed” only adds more confusion to the
term and one not readily understood by one of ordinary skill in the art. (Id.)
Plaintiff replies that the intrinsic and extrinsic evidence dictate that the chamber must be
enclosed by walls. (Dkt. No. 59 at 7.) Plaintiff argues that Defendant’s contention that wall-towall airflow is “technically impossible” is belied by its own statement claiming that airflow in its
tunnels permits “wall-to-wall” flying. (Id.) Plaintiff further argues that a person of skill would
understand that airflow in a closed test section is wall-to-wall, despite boundary layers. (Id.)
Plaintiff also contends that Defendant’s “boundary layer” arguments are extrinsic evidence,
which cannot be used to contradict the wall-to-wall airflow taught by the intrinsic record. (Id.)
For the following reasons, the Court finds that the phrase “chamber for containing an
airflow” should be construed to mean “area enclosed by walls for containing an airflow.”
b) Analysis
The phrase “chamber for containing an airflow” appears in claims 1, 12, 17, 18-21, 24,
27, 28, 43, 44 of the ’028 Patent. The Court finds that the phrase is used consistently in the
claims and is intended to have the same general meaning in each claim.
The Court further finds that the intrinsic evidence indicates that the recited “chamber” is
an area enclosed by walls. Specifically, the Abstract states that the present invention “comprises
a flight chamber wherein a user may experience a freefall through the atmosphere from the
safety of an enclosed flight chamber.” ’028 Patent at Abstract (emphasis added). Figure 12
provides an illustration of the preferred enclosed flight chamber 1200 that includes glass
windows 1201 and 1205.
Page 18 of 46
Id. at Figure 12. The specification states that “[t]he preferred embodiment of the flight chamber
is shown with ten sides, although any number of sides, or round or elliptical sides will suffice.”
Id. at 7:20–22. The specification further states that “[e]ach wall of the flight chamber comprises
windows constructed of transparent Plexiglas®, acrylic plastic, or similar high strength window
material.” Id. at 3:45–48. Accordingly, the Court finds that the intrinsic records indicates that the
recited “chamber” is an “area enclosed by walls.” Indeed, it is this enclosed area that allows for a
constant airflow velocity “across the entire flight chamber.” Id. at 6:35–37.
In addition, the extrinsic evidence also indicates that a person of ordinary skill would
understand that the recited “chamber” is an “area enclosed by walls.” Defendant’s expert stated
that his understanding of the plain and ordinary meaning of the phrase “chamber containing an
airflow” is “some sorts of walls that bound the airflow on its sides.” (Dkt. No. 59-3 at 8) (Sept. 2,
2015 Depo. of Dr. Werner Dahm at 157:3-22). Likewise, during the claim construction hearing,
Page 19 of 46
Defendant stated that it agreed with the Court’s construction. Thus, the intrinsic and extrinsic
evidence indicate that the recited “chamber” is an “area enclosed by walls.” However, the
Court’s construction does not mean that the chamber has to be completely enclosed by walls. For
example, the specification states the flight chamber has an entry opening and an exit opening to a
staging area that is adjacent to it. ’028 Patent at 3:51–53.
Turning to Plaintiff’s construction, the Court finds that including the intended use of “for
simulated skydiving by one or more persons” in the construction for “chamber” is unwarranted
and unnecessary. As discussed above, the patentability of apparatus claims generally “depends
on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int'l v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Here, the additional language
proposed by Plaintiff serves no purpose other than to state an intended use for the chamber.
Regarding Plaintiff’s proposal of “wherein the high speed airflow extends from wall to
wall,” the Court finds that this language should not be read into the disputed phrase. The Court
agrees with Defendant that “high speed airflow” could be confusing given that vertical wind
tunnels for spin testing and skydiving simulations are actually in the category of “low speed”
tunnels. (Dkt. No. 55-2 at 8) (August 25, 2015 Depo. of Raymond Whipple at 63:2-21)
(testifying that tunnels below 0.6 Mach are in the category of low speed tunnels). As Plaintiff’s
expert testified, the term “high speed” is simply a “relative” term to signify that this is in the
“higher” range of a “low speed tunnel.” Id. The Court finds that there is no reason to read this
relative term into the claims.
Regarding Plaintiff’s “wall to wall” proposal, the Court is not persuaded by Defendant’s
argument that wall-to-wall airflow is “technically impossible.” It is undisputed that there is a
boundary layer, but as Plaintiff’s expert testified, the boundary layer is a very small dimension
Page 20 of 46
and is in the range of a fraction of an inch. (Dkt. No. 55-2 at 11-12) (August 25, 2015 Depo. of
Raymond Whipple at 66:16-21, 67:11-17). The specification states that the preferred diameter of
the flight chamber is between 10 and 13 feet. ’028 Patent at 5:49–50. Given the preferred
diameter, a fraction of an inch would be insignificant for low-speed wind tunnels. Indeed,
Defendant agreed at the claim construction hearing that the boundary layer drops off quickly.
Finally, during the claim construction hearing Plaintiff argued that the specification states
that the airflow velocity is constant across the entire flight chamber. The Court finds that when
the patentees intended to limit the claims to airflow extending from wall to wall, they did so
explicitly. For example, claims 18, 19, and 43 recite “a chamber for containing an airflow, said
chamber having a width and said airflow being substantially constant across the width of the
chamber.” In contrast, claims 1, 12, 20, 21, 28, and 44 only recite “a chamber for containing an
airflow.” Accordingly, the Court finds that Plaintiff’s “wall to wall” proposal should not be read
into every claim. Finally, the Court has considered the remaining extrinsic evidence submitted
by the parties, and given it its proper weight in light of the intrinsic evidence.
c) Court’s Construction
In light of the evidence submitted by the parties, the Court construes the phrase
“chamber for containing an airflow” to mean “area enclosed by walls for containing an
airflow.”
3. “staging area”
Disputed Term
“staging area”
Plaintiff’s Proposal
“enclosed area which allows
persons to enter and/or exit the
chamber without significantly
adjusting the airflow velocity
therein”
Page 21 of 46
Defendant’s Proposal
“an area where a person can
access the chamber”
a) The Parties’ Positions
The parties generally agree that the staging area allows users to access the chamber.
Plaintiff argues that the specification and file history clearly describe the “staging area” as an
“enclosed” area that allows multiple users to enter and exit the chamber without having to shut
off the fans. (Dkt. No. 45 at 18-19) (citing ’028 Patent at 7:40–55; Dkt. No. 45-2 at 5 (March 16,
2010 Office Action Response)). Plaintiff contends that the Abstract makes clear that “a user may
enter or retreat from the flight chamber at will through the staging area openings without
significantly adjusting the airflow velocity in the flight chamber.” (Id. at 18.) Plaintiff further
argues that Defendant’s construction ignores the disclaimer in the prosecution history and
broadens the term to encompass unenclosed areas. (Id. at 18-19.)
Defendant responds that adding the word “enclosed” is superfluous. (Dkt. No. 55 at 18.)
Defendant contends that the claim recites “a staging area forming an outer chamber adjacent to
said chamber,” and thus already includes the concept of a bounded space. (Id. at 18.) Defendant
further argues that the word “enclosed” is never used in the specification to describe the staging
area. (Id.) Defendant also argues that the term “enclosed” is inaccurate because the staging area
has an opening that leads into the staging area from the outside, and at least one or two
additional openings that lead into the flight chamber. (Id.) (citing ’028 Patent at 7:24–27).
According to Defendant, any time the door to the staging area is open, the staging area is not
enclosed. (Id.) Regarding the prosecution history, Defendant argues that the claims at issue were
cancelled and the issue was not decided. (Id.)
Regarding Plaintiff’s proposal of “without significantly adjusting the airflow velocity
therein,” Defendant argues that this functional limitation comes from the Abstract to explain a
general goal and is not described in the rest of the specification. (Id.) Defendant contends that
“significantly adjusting” only creates more confusion because it is not clear what constitutes
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significantly adjusting. (Id. at 18-19.) Defendant further argues that Plaintiff’s construction is
further contradicted by the specification because the patentees contemplated that adjustments
may be necessary to stabilize the user. (Id. at 19) (’028 Patent at 8:27–28).
Plaintiff replies that the patentees disclaimed the broad interpretation that Defendant
seeks and clarified that the “staging area” is an “enclosed” area that connects to the flight
chamber. (Dkt. No. 59 at 8.) Plaintiff also argues that Defendant’s expert acknowledges that the
staging area must allow persons to enter and exit the chamber. (Id.) Plaintiff further argues that
Defendant’s construction is contradicted by the intrinsic record. (Id.)
For the following reasons, the Court finds that the term “staging area” should be
construed to mean “enclosed area that has an opening that allows a person to enter and/or
exit the chamber.”
b) Analysis
The term “staging area” appears in claims 1, 12, 14, 15, 17-21, 24-29, 32, 39, 43, and 44
of the ’028 Patent. The Court finds that the term is used consistently in the claims and is
intended to have the same general meaning in each claim. The Court further finds that the
intrinsic evidence indicates that the recited “staging area” is an “enclosed area that has an
opening that allows a person to enter and/or exit the chamber.” During prosecution of the ’028
Patent, the patentees distinguished prior art by arguing that the “staging area” of the invention is
an “enclosed chamber,” and not simply an area that allows access to the flight chamber.
Specifically, the patentees argued that “[a] close reading of Consolini makes it clear that there is
no staging area that is an outer chamber. The staging area of Consolini is a platform, not an
enclosed chamber . . . .” (Dkt. No. 45-2 at 5) (March 16, 2010 Office Action Response). The
Court finds that the patentees’ clearly and unmistakably limited the recited “staging area” to an
Page 23 of 46
enclosed area, and not simply a passage or platform that allows “access” to the flight chamber, as
Defendant proposes.
In addressing the prosecution disclaimer, Defendant responds that the claims at issue
were cancelled and the issue was not decided. (Dkt. No. 55 at 18.) Defendant points to no
authority that suggests that prosecution arguments cannot be considered if they are made in the
context of claims that did not issue. Indeed, in this instance, the opposite would be true because
“by distinguishing the claimed invention over the prior art, an applicant is indicating what the
claims do not cover.” Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997). Here,
the “staging area” limitation appears in issued claims and the patentees’ statement is equally
informative for all claims that require the recited “staging area.”
Regarding the remaining portion of the Court’s construction, the parties generally agree
that the staging area allows users to access the chamber. The parties dispute exactly how that
should be included in the construction. The Court finds that the recited area has an opening that
allows a person to enter and/or exit the chamber. For example, the specification describes the
staging area as an enclosed area that houses multiple waiting flyers and permits them to
enter/exit the flight chamber through an opening. ’028 Patent at 7:40–55; see also id. at 3:51–53
(“The flight chamber has an entry opening and exit opening to the staging area through which a
user may enter and exit the flight chamber.”); 10:25–26 (“A user enters the flight chamber 1200
through openings 1203 or 1204.”).
During the claim construction hearing, Defendant argued that the Court’s construction
was incorrect because requiring the staging area to be “enclosed” would exclude accessing the
staging area itself. To be clear, the Court’s construction does not address accessing the staging
area itself. Furthermore, the Court’s construction does not exclude the staging area from having a
Page 24 of 46
door or other opening that provides access to the staging area. Indeed, the specification states
that the user enters the staging area through a door. Id. at 7:26–27, 10:27–28. As discussed
above, the Court’s construction is based on the patentees’ statement that the recited “staging
area” is an enclosed area where a user can wait before entering the flight chamber. Id. at 3:53–
54.
Turning to Plaintiff’s construction, Plaintiff requires the “staging area” to further include
allowing a person to enter and/or exit the chamber “without significantly adjusting the airflow
velocity therein.” The Court finds that this additional language is unnecessary and unwarranted.
Plaintiff cites to the Abstract for support for this language, but there is no indication in the
intrinsic record how “significantly adjusting” would be interpreted. In fact, the specification
states that “[i]f adjustment is necessary to stabilize a user, an operator in control room 371
adjusts the operation of the fans . . . to increase or decrease the velocity of airflow.” ’028 Patent
at 8:27–28. This indicates that the patentees understood that adjustments may be necessary to
stabilize a user. Therefore, it would be potentially confusing to read into the claim a “nonadjustment” limitation. Moreover, Plaintiff agreed with the Court’s construction during the claim
construction hearing. Accordingly, the Court rejects this portion of Plaintiff’s construction.
Finally, the Court has considered the extrinsic evidence submitted by the parties, and given it its
proper weight in light of the intrinsic evidence.
c) Court’s Construction
In light of the evidence submitted by the parties, the Court construes the term “staging
area” to mean “enclosed area that has an opening that allows a person to enter and/or exit
the chamber.”
Page 25 of 46
4. “a fan whereby an airflow is induced”
Disputed Term
“a fan whereby an
airflow is induced”
Plaintiff’s Proposal
No construction is needed. This
phrase should be given its plain
and ordinary meaning.
Defendant’s Proposal
“a fan situated on top of the
chamber that pulls airflow up
through the chamber”
a) The Parties’ Positions
The parties dispute whether the phrase “a fan whereby an airflow is induced” requires
construction. Plaintiff argues that the phrase is a simple one that a person of ordinary skill would
readily understand to mean what it says. (Dkt. No. 45 at 20.) Plaintiff contends that there is
nothing in the ordinary meaning of the term “a fan whereby an airflow is induced” that limits the
location of the fan. (Id. at 21.) Plaintiff further argues that there is nothing in the specification or
the prosecution history that limits the configuration of the vertical wind tunnel to one where the
fan is situated on top of the flight chamber. (Id.) According to Plaintiff, the fan simply has to
induce airflow through the flight chamber so that a skydiver can be fully supported in the air
column. (Id.) (citing ’028 Patent at Abstract).
Plaintiff further argues that Defendant’s construction is also incorrect because it violates
the principles of claim differentiation. (Id.) Plaintiff contends that it is dependent claim 4
(dependent on claim 1) that requires the fan to be on “top of the chamber.” (Id. at 21-22.)
Plaintiff argues that Defendant’s construction eliminates any differences between claims 1 and 4
and reads the limitation of claim 4 into claim 1. (Id. at 22.) Plaintiff also argues that Defendant’s
construction renders the phrase “mounted on top of the chamber” superfluous in claims 20 18,
19, and 43. (Id.) According to Plaintiff, Defendant’s construction fails to give meaning to all
terms in the claim. (Id.)
Finally, Plaintiff argues that Defendant’s construction excludes the preferred embodiment
from the scope of the claims. (Id.) Plaintiff contends that the preferred embodiment describes the
Page 26 of 46
fans being placed at a location above the flight chamber, not “on top” of the flight chamber. (Id.)
(citing ’028 Patent at 3:21–23, 4:13–18, 5:25–30, 7:2–3). Plaintiff further contends that the
specification never suggests that the fans must be directly “on top of” the flight chamber. (Id. at
23.) Plaintiff also argues that Figure 2 of the ’028 Patent shows fans (270 and 280) situated
above the flight chamber (110), not situated on “top of the chamber.” (Id.)
Defendant responds that the inventors had in mind a very specific orientation for the
location of the fan to achieve their goal of “improved airflow control and stability.” (Dkt. No. 55
at 19-20) (citing ’028 Patent at 2:57–58, 3:18–19, 2:38–40, 4:15–18, 5:28–31, 5:61–67, 6:13–15,
6:44–47, 7:2–3, 8:38–40, 11:18–21). Defendant argues that Plaintiff concedes that the only
orientation contemplated by the inventor was placing the fans radially above the vertical axis and
above the chamber. (Id. at 20.) Defendant further argues that in the CIP Application, the
patentees added a return duct in new claims, but did not change anything else about the structure
or orientation of the wind tunnel, including the location of the fans. (Id.)
Defendant further argues that identifying the location of the fan(s) on top of the chamber
is necessary to make sense of the claims. (Id. at 21) (citing ’028 Patent at Claims 1, 3, 19 and
30). According to Defendant, to make sense of the inlet contraction being “at a bottom end
opposite said fan,” the fan must be located at the top end of the chamber opposite said inlet
contraction, otherwise claims 1, 2, and 3 would be completely nonsensical. (Id.) Defendant
further argues that identifying the fan as being on top of the chamber is the only way to make
sense of the claims when they are read together. (Id.) Defendant contends that in the sequence set
forth by claims 1, 2, 3, and 5, the components are put together in a way such that the fan must
always be on top of the chamber. (Id.)
Defendant also argues that in overcoming a Patent Office rejection over prior art, the
Page 27 of 46
patentees differentiated their invention by arguing that the fans of the instant invention are
situated above the flight chamber. (Id. at 22) (citing Dkt. No. 55-3 at 12) (May 28, 1999
Preliminary Amendment). Defendant contends that by explicitly stating that the fans must be
above the flight chamber, the patentees made a clear disclaimer regarding the scope of the
invention to obtain claim allowance. (Id.) Defendant argues that its construction captures the
precise scope set forth by the patentees and excludes what they disclaimed during prosecution.
(Id.)
Regarding Plaintiff’s claim differentiation argument, Defendant argues that Plaintiff fails
to recognize that the claimed dependency is based on the number of fans. (Id.) Defendant
contends that claim 1 provides for “a fan” (one or more), while claim 4 provides for “a plurality”
of fans (two or more). (Id.) Defendant further argues that even if there was some concern
regarding claim differentiation, “prosecution history disclaimer can overcome the presumption
of claim differentiation.” (Id. at 23) (citing Biogin Idec. Inc. v Glaxosmithkline, 713 F.3d 1090,
1097 (Fed. Cir. 2013)).
Plaintiff replies that the purported “disclaimer” Defendant relies on never states that the
fans must be “on top” of the flight chamber. (Dkt. No. 59 at 8-9.) Plaintiff further contends that
in the preferred embodiment, the fan is not directly “on top” of the flight chamber, it is simply
above the flight chamber. (Id. at 9.) Plaintiff argues that Defendant provides no intrinsic or
extrinsic support to show that “above” necessarily means “on top of.” (Id.) According to
Plaintiff, the specification makes clear that “above” simply means “downstream” of the flight
chamber, and requires the flight chamber to be on the “inlet side of the fans.” (Id.) (citing ’028
Patent at 3:21–23, 2:55–58). Plaintiff argues that the specification never states that the fans must
be “on top” of the flight chamber. (Id.)
Page 28 of 46
Plaintiff also argues that claims 1, 2, and 3 do not require the fan location to be “on top”
of the chamber. (Id.) Plaintiff contends that if the fan is at an “opposite” end from the inlet
contraction, it can be “arranged radially” around the top end of the flight chamber as described in
the specification or in any number of other possible configurations, without necessarily being
directly “on top” of the flight chamber. (Id.) According to Plaintiff, Defendant’s construction
would read the preferred embodiment out of the claims. (Id. at 10.)
For the following reasons, the Court finds that the phrase “a fan whereby an airflow is
induced” should be construed to mean “a fan located above the chamber that induces an
airflow.”
b) Analysis
The phrase “a fan whereby an airflow is induced” appears in claims 1, 12, 17, 20, 21, 24,
27, 28, and 44 of the ’028 Patent. The Court finds that the phrase is used consistently in the
claims and is intended to have the same general meaning in each claim.
The Court finds that the intrinsic evidence indicates that the recited “fan” must be located
“above the chamber.” During prosecution of the ’028 Patent, the patentees distinguished prior art
by arguing that “the instant invention creates a uniform airflow profile because the fans are
above the flight chamber.” (Dkt. No. 45-3 at 12) (May 28, 1999 Preliminary Amendment)
(emphasis added). The Court finds that this is a clear and unmistakable disclaimer regarding the
scope of the claims. Southwall Techs. Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir.
1995) (“The prosecution history limits the interpretation of claim terms so as to exclude any
interpretation that was disclaimed during prosecution.”). Accordingly, the Court finds that the
patentees limited the claim to embodiments where the fans are located above the flight chamber.
Turning to Defendant’s construction, the Court finds that it is not consistent with the
Page 29 of 46
intrinsic evidence. As discussed above, the patentees argued that the fans must be above the
flight chamber. Fans located “above” the flight chamber include fans located “on top” of the
chamber, but located “above” is not limited to located “on top.” For example, the specification
describes embodiments that have the fans located “above” the flight chamber, but not necessarily
located “on top” of the flight chamber. ’028 Patent at 3:21–23 (“Airflow is induced through the
flight chamber by a plurality of fans located above, i.e. downstream of, the flight chamber.”),
4:13–18 (“[A]bove the perforated section is a divergent diffuser…. [and] above the divergent
diffuser are the fan inlets and the fans.”). Likewise, Figure 2 illustrates fans (270 and 280)
situated above and offset to the side of the flight chamber (110), but not literally “on top” of the
flight chamber.
The Court also finds that Defendant’s construction is inconsistent with the doctrine of
claim differentiation and would render the phrase “mounted on top of the chamber” superfluous
in the dependent claims. For example, independent claim 1 recites “a fan whereby an airflow is
induced,” but does not recite that the fan must be mounted on “top of the chamber.” Instead, it is
dependent claim 4 that recites that a plurality of fans are “mounted on top of the chamber.”
Independent claim 28 and dependent claim 31 also include these respective limitations. Under
the doctrine of claim differentiation, different claims are presumed to have different scope and a
dependent claim’s limitations are not to be read into the independent claim from which it
depends. Phillips, 415 F.3d at 1314-15 (“[T]he presence of a dependent claim that adds a
particular limitation gives rise to a presumption that the limitation in question is not present in
the independent claim.”). Here, the Court finds that Defendant’s construction would read the
limitation of dependent claim 4 into independent claim 1, and the limitation of dependent claim
31 into independent claim 28.
Page 30 of 46
Moreover, independent claim 20 recites “a plurality of fans mounted on top of the
chamber for inducing an airflow upwards through the chamber.” Thus, the claim language
indicates that when the patentees intended to limit the claims to fans mounted on top of the
chamber, they did so explicitly. Indeed, the specification indicates that the patentees intended
“above” to mean a structure where the fans are lcoated “downstream” of the flight chamber. ’028
Patent at 3:21–23 (“Airflow is induced through the flight chamber by a plurality of fans located
above, i.e. downstream of, the flight chamber.”). In other words, a person of ordinary skill in the
art would understand from the specification and the prosecution history that the fans may be
located at several possible locations relative to the flight chambers as long as they are “above”
and “downstream” from the chamber. Accordingly, the Court does not adopt Defendant’s
construction.
Defendant also argues that the components set forth in claims 1, 2, 3, and 5 are put
together in a way such that the fan must always be on top of the chamber. (Dkt. No. 55 at 21.)
The Court disagrees. For example, the limitations in claim 1 will impact the scope of claims 2
and 3, but the limitations in claims 2 and 3 generally do not impact the scope of claim 1. Here,
Claim 1 recites the “fan communicating with said chamber by a duct.” Claim 2 further recites
that the “duct has a diverging taper from said chamber to said fan.” Claim 3 recites “an inlet
contraction connected to said chamber at a bottom end opposite said fan.” Claim 5 recites “a
return air duct having a first end connected to an outlet of said fan; a plenum aerodynamically
communicating with said inlet contraction; and a second end of said return air duct connected to
said plenum.”
Thus, the relationship between claim 1 and claim 3 is as follows: the “fan” must be
“above” the chamber in claim 1, but must be “above” the chamber and “opposite said fan” in
Page 31 of 46
claim 3. Therefore, absent other limitations, when read together, claims 1, 2, 3, and 5 just require
the fan to be located above the chamber (i.e., opposite the end of the chamber connected to the
inlet contraction). As long as the fan is located above the chamber, claims 1, 2, 3, and 5 provide
other limitations which describe the arrangement of the remaining elements. The Court agrees
that if the fan is located below the chamber, then the recited arrangement does not make sense.
Finally, the Court has considered the extrinsic evidence submitted by the parties, and given it its
proper weight in light of the intrinsic evidence.
c) Court’s Construction
In light of the evidence submitted by the parties, the Court construes the phrase “a fan
whereby an airflow is induced” to mean “a fan located above the chamber that induces an
airflow.”
5. “aerodynamically communicating”
Disputed Term
“aerodynamically
communicating”
Plaintiff’s Proposal
“connecting in a manner that
minimizes the introduction of
turbulence”
Defendant’s Proposal
Term is indefinite.
To the extent this terms is not
indefinite, this term should
mean “directly joining or
connecting one area or space to
another area or space.”
a) The Parties’ Positions
Defendant contends that the term “aerodynamically communicating” is indefinite because
it has no plain and ordinary meaning to those skilled in the art. (Id. at 24.) Defendant argues that
the specification fails to define the term at all, let alone clearly such that a person of ordinary
skill reading the patent would understand with reasonable certainty what it means. (Id.)
Defendant also argues that the inconsistent use of the term within the claims and the prosecution
history demonstrates that the inventor was either uncertain or intentionally ambiguous with
Page 32 of 46
regard to its meaning. (Id.)
According to Defendant, the patentees drew a distinction between “communicating” and
“aerodynamically communicating” in the claims. (Id. at 25.) Defendant also argues that the
patentees drew a distinction between air flowing between the staging area and the chamber, i.e.,
“aerodynamically communicating,” and the air flowing between the fan and the chamber, i.e.,
“communicating,” in the same claims. (Id.) Defendant further argues that Plaintiff’s expert did
not
understand
the
distinction
between
“aerodynamically
communicating”
and
“communicating.” (Id. at 25-27.) Defendant also contends that the file history provides no
assistance. (Id. at 27.) According to Defendant, the inconsistent and indiscriminate use of the two
terms in the claims and prosecution history precludes one of ordinary skill in the art from
defining the term “aerodynamically communicating” with reasonable certainty. (Id. at 27-29.)
In the alternative, Defendant argues that if the Court construes the term “aerodynamically
communicating,” it should be construed to mean “directly joining or connecting on area or space
to another area or space.” (Id. at 29.) Defendant contends that Plaintiff’s assertions regarding this
term are completely at odds with how a person of ordinary skill in the art would understand the
term. (Id.) Defendant argues that Plaintiff agrees that “aerodynamic communication” refers to
connecting or joining two areas. (Id. at 30.) Defendant contends that Plaintiff’s attempt to
distinguish between “directly” communicating and presumably “indirect” means of connecting
or joining two areas is misplaced. (Id.) Defendant argues that it does not matter if there are other
elements between those spaces, so long as they do not interrupt a continuous path through air
connecting the two spaces. (Id.)
Defendant also argues that contrary to Plaintiff’s suggestion, claims 28 and 43 claim a
plenum directly joining with a chamber. (Id. at 31.) Defendant further argues that Plaintiff makes
Page 33 of 46
the same misleading arguments for claims 8 and 36. (Id.) Defendant contends that claims 8 and
36 actually claim a return duct directly joining with a fan, consistent with its construction. (Id.)
Defendant further contends that following Plaintiff’s logic, everything in a recirculating wind
tunnel would theoretically be connected in some way. (Id. at 32.)
Plaintiff responds that a person of ordinary skill in the art would understand the term
“aerodynamically communicating with” to have its plain and ordinary meaning, which is
“connecting in a manner that minimizes the introduction of turbulence.” (Dkt. No. 45 at 25.)
Plaintiff contends that an “aerodynamic” design is one that reduces or eliminates any turbulence.
(Id.) (citing ’028 Patent at 3:35–38, 6:55–58, 3:35–38, 5:33–43, 6:53–61).
Regarding Defendant’s construction, Plaintiff argues that it is incorrect because: (1) it
inserts an extraneous spatial limitation; (2) it excludes an embodiment from the scope of the
claims; and (3) it ignores the express teachings of the specification. (Id. at 25–26.) Plaintiff
contends that Defendant attempts to limit the term to only “direct” connections or joints. (Id. at
26.) According to Plaintiff, the intrinsic record describes several examples of aerodynamic
connection where the two areas are not directly connected to each other. (Id.) (citing ’028 Patent,
5:65–6:3, Figures 18-19). Plaintiff further argues that the plain language of the claims indicates
that a “direct” connection is not required. (Id.) Plaintiff argues that the embodiments described in
Figures 18 and 19 disclose plenum (1810) indirectly connecting to the flight chamber (240) via
the inlet contraction (100). (Id.) (citing ’028 Patent at 11:17–21, Figures 18-19). Plaintiff
contends that Defendant’s construction that requires a direct connection excludes this
embodiment from the scope of claims 28 and 43. (Id.)
Plaintiff also argues that the description of the embodiment in Figure 18 discloses the
connection between the fan and a return air duct as an indirect connection, when the fans (270
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and 280) connect to a fan exit duct (1840) and the fan exit duct is then connected to the return air
ducts (1800). (Id. at 27) (citing ’028 Patent at 11:9–41). Plaintiff argues that nothing in the
specification requires the fans to be “directly” connected to the return air duct and that
Defendant’s construction would exclude this embodiment from the scope of the claims. (Id.)
Plaintiff further argues that the specification’s use of the term “aerodynamically” shows that a
purely direct connection is not required. (Id. at 28) (citing ’028 Patent at 5:65–67). Plaintiff
contends that aerodynamic communication can be accomplished by indirectly connecting two or
more spaces. (Id.)
Finally, Plaintiff argues that Defendant’s expert admits that the term “aerodynamically
communicating” means “simply areas or spaces that are connected or directly joined to other
areas or space.” (Dkt. No. 59 at 11) (citing Dkt. 55-9 at 12). According to Plaintiff, Defendant’s
expert’s construction allows for two areas or spaces to “aerodynamically communicate” if they
are either “connected” or “directly joined” to each other. (Id. at 12.) Plaintiff argues that
Defendant expert’s declaration reveals that nothing in the meaning of this term requires a “direct
connection.” (Id.)
For the following reasons, the Court finds that the term “aerodynamically
communicating” should be construed to mean “connecting in a manner that provides a
continuous airflow path.”
b) Analysis
The term “aerodynamically communicating” appears in claims 1, 5, 8, 12, 17-21, 24, 2729, 36, 43, and 44 of the ’028 Patent. The Court finds that the term is used consistently in the
claims and is intended to have the same general meaning in each claim. The Court further finds
that the disputed term, when read in light of the specification and the prosecution history,
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informs, with reasonable certainty, those skilled in the art about the scope of the invention.
Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). Moreover, the Court
finds that the term “aerodynamically communicating” should be construed to mean “connecting
in a manner that provides a continuous airflow path.”
In describing the communication between the fans and the flight chamber, the
specification states the following:
The diffuser brings the airflow to the proper velocity to match the fan
requirement. Further, the slowed airflow is no longer capable of supporting a user.
Consequently, the invention has a “fail-safe” feature which prevents a user from
approaching or being drawn into the fans. The slowed airflow also reduces the
frictional losses in the flowpath, resulting in reduced fan size. Further, the diffuser
serves as a means of aerodynamically connecting the fans to the flight chamber
since the fans have a larger overall diameter than the flight chamber. Transition
section 130 divides the airflow path from a single path in diffuser 120 to five
airflow paths, resulting in a dedicated airflow path to each fan inlet.
’028 Patent at 5:63–65 (emphasis added). Here, the specification describes the diffuser
aerodynamically communicating with the flight chamber via an airflow path. Similarly in
describing the communication between the inlet contraction and the flight chamber the
specification states the following:
The flow path through the invention begins at the inlet contraction. Ambient air is
drawn into the inlet contraction starting with essentially zero velocity. The inlet
contraction is aerodynamically designed to allow the incoming airflow to be
accelerated to the optimum velocity with as little turbulence as possible. The
airflow then passes through a floor mesh into the flight chamber. The floor mesh
provides support for the users when the airflow through the flight chamber is not
sufficient to support them.
’028 Patent at 3:33–41(emphasis added). Again, the specification describes the inlet contraction
aerodynamically communicating with the flight chamber via an airflow path. Thus, a person of
ordinary skill in the art would understand the term “aerodynamically communicating” means
“connecting in a manner that provides a continuous airflow path.”
The parties appear to agree that “aerodynamically communicating” means connecting in
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a manner that provides a continuous path through air. Defendant argues in its brief that “[b]ut so
long as there is a continuous path through air connecting any two spaces . . . those spaces must
be said to ‘aerodynamically communicate’ with each other.” (Dkt. No. 55 at 30) (citing Dkt. No
55-9 at 12-13) (Declaration of Dr. Werner Dahm at ¶¶ 44-45). Likewise, Plaintiff argues in the
alternative that the term “aerodynamically communicating” should be construed to mean
“connecting in a manner that provides a continuous path through air.” (Dkt. No. 59 at 12 n.21.)
As discussed above, the Court finds that the intrinsic evidence is consistent with the parties’
arguments.
Regarding Defendant’s indefiniteness argument, the Court finds that the terms
“communicating,” “aerodynamically communicating,” and “in fluid communication” are used
interchangeably. The claims use these terms to describe parts of the device that are connected in
a manner that provides a continuous airflow path. For example, claim 1 recites that the “fan
communicating with said chamber by a duct” and that the “staging area aerodynamically
communicating with said chamber.” ’028 Patent at claim 1 (emphasis added). Similarly, claim 39
recites that the “staging area in fluid communication with the flight chamber.” ’028 Patent at
claim 39 (emphasis added). In each of these claims, the terms “communicating,”
“aerodynamically communicating,” and “in fluid communication” are used to indicate that parts
of the device are connected in a manner that provides a continuous airflow path. Contrary to
Defendant’s contention, the claims and the intrinsic evidence indicate that these terms are used
interchangeably.
Indeed, claim 1 recites the “fan communicating with said chamber by a duct,” and the
specification describes the same communication as “aerodynamically connecting the fans to the
flight chamber” ’028 Patent at 5:65–66 (emphasis added). Defendant does not contend that the
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term “communicating” is indefinite. Instead, Defendant argues that the term “communicating”
must have a different meaning from “aerodynamically communicating,” and therefore the term
“aerodynamically communicating” is indefinite. Contrary to Defendant’s argument, there is no
requirement that different terms must have different meanings. Instead, the Federal Circuit has
stated that “[a] claim construction that gives meaning to all the terms of the claim is preferred
over one that does not do so.” Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372
(Fed. Cir. 2005). Here, the Court is giving meaning to all of the claim terms by construing the
term “aerodynamically communicating” as it would be understood by a person of ordinary skill
in the art.
The Court understands that there is a presumption that different terms have different
meaning, but that presumption has been overcome in this case. CAE Screenplates, Inc. v.
Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of
any evidence to the contrary, we must presume that the use of these different terms in the claims
connotes different meanings.”). As discussed above, the intrinsic evidence indicates that the
terms “communicating,” “aerodynamically communicating,” and “in fluid communication” are
used interchangeably. Indeed, Defendant’s expert opined that “[b]ut so long as there is a
continuous path through air connecting any two spaces—as there must be for the wind tunnel
claimed in the ’028 Patent to operate—those spaces can be said to ‘aerodynamically
communicate’ with each other.” (citing Dkt. No 55-9 at 12) (Declaration of Dr. Werner Dahm at
¶ 44). Accordingly, the Court finds that Defendant has failed to prove by clear and convincing
evidence that the term is indefinite. Finally, the Court has considered the remaining extrinsic
evidence submitted by the parties, and given it its proper weight in light of the intrinsic evidence.
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c) Court’s Construction
In light of the evidence submitted by the parties, the Court construes the term
“aerodynamically communicating” to mean “connecting in a manner that provides a
continuous airflow path.”
6. “said chamber having a width”
Disputed Term
“said chamber having a
width”
Plaintiff’s Proposal
No construction is needed. This
phrase should be given its plain
and ordinary meaning.
Defendant’s Proposal
Term is indefinite.
To the extent this terms is not
indefinite, this term should
mean “said chamber having a
constant width/diameter.”
a) The Parties’ Positions
Defendant contends that the phrase “said chamber having a width” is indefinite. (Dkt. No.
55 at 33.) Defendant argues that width signifies a particular measurement of something, and
there is no guidance as to what that measure is. (Id.) According to Defendant, a person of
ordinary skill in the art reading this statement would have no clear understanding what “width”
or range of widths the inventor sought to patent by these claims. (Id.) Defendant further argues
that the specification describes chambers having a number of sides or being elliptical. (Id.)
(citing ’028 Patent at 7:20–22). Defendant contends that such chambers would necessarily have
multiple widths, thus it would be impossible to ascribe a single width to such chambers. (Id.)
Defendant further argues that Plaintiff could not explain why it was added to overcome prior art
and failed to explain what it means. (Id.)
Plaintiff responds that a person of ordinary skill in the art would understand that the
phrase “said chamber having a width” refers to the width as measured at a horizontal crosssection of the flight chamber. (Dkt. No. 45 at 28.) Plaintiff contends that the plain and ordinary
meaning of the term “said chamber having a width” means that the chamber has a width. (Id.)
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Plaintiff argues that inserting the word “constant” in the claim term finds no basis in the intrinsic
record. (Id. at 29) Plaintiff contends that the term simply refers to a flight chamber having a
width. (Id.)
Plaintiff further argues that it is axiomatic that three dimensional structures have a height,
width, and depth; and that having a width is simply an inherent characteristic of a threedimensional flight chamber. (Dkt. No. 45 at 29.) Plaintiff contends that several embodiments
disclose flight chambers having variable widths. (Id. at 29-30) (citing ’028 Patent at Figures 3,
12, 15-17). Plaintiff further notes that the flight chamber of the preferred embodiment is
described as a decahedron, not circular. (Id. at 30) (citing at ’028 Patent at 7:20–22). According
to Plaintiff, it would be apparent to a lay person that a decahedron has a different width between
its flat edges compared to the width between its pointed edges. (Id.)
Plaintiff further argues that Defendant excludes the embodiments described in Figures 3,
12, and 15-17 from the scope of the claims by requiring the width to be “constant.” (Id.) Plaintiff
contends that Defendant cannot point to a single disclaimer that excludes these embodiments
from the scope of the claims. (Id.) Plaintiff further argues that Defendant’s construction is
contradicted by the intrinsic record. (Id. at 31.) Finally, Plaintiff argues that Defendant ignores
the plain meaning and seeks absolute precision and a “quantifiable measurement” for what the
width ought to be. (Dkt. No. 59 at 12-13.) According to Plaintiff, that is not the standard by
which indefiniteness is gauged. (Id. at 13.)
For the following reasons, the Court finds that the phrase “said chamber having a
width” is not indefinite and should be given its plain and ordinary meaning.
b) Analysis
The phrase “said chamber having a width” appears in claims 18, 19, and 43 of the ’028
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Patent. The Court finds that the phrase is used consistently in the claims and is intended to have
the same general meaning in each claim. The Court further finds that the disputed phrase, when
read in light of the specification delineating the patent and the prosecution history, informs, with
reasonable certainty, those skilled in the art about the scope of the invention. Nautilus Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). Moreover, the Court finds that the phrase
does not require construction because it is unambiguous, is easily understandable by a jury, and
should be given its plain and ordinary meaning.
A person of ordinary skill in the art would understand the phrase “said chamber having a
width” is referring to the width as measured at a horizontal cross-section of the flight chamber.
In other words, the plain and ordinary meaning of the phrase “said chamber having a width” is
exactly what it plainly states, the chamber has a width. Having a width is an inherent
characteristic of a three-dimensional flight chamber. There is nothing unclear or ambiguous
about this phrase. Moreover, the specification provides examples of the possible widths for the
chamber. ’028 Patent at 5:49–51 (“The preferred diameter range of the flight chamber is between
10 and 13 feet, although any diameter may be used assuming the proper size and number of fans
are used.”); 3:41–42 (“The flight chamber is approximately 12 feet in diameter.”). The phrase is
in the claim apparently to provide an antecedent basis for the next phrase “and said airflow being
substantially constant across the width of the chamber” ’028 patent at 13:52–54. That is a
common claim-drafting protocol and does not cause the claim to be indefinite.
In the alternative, Defendant argues that phrase should be construed to mean “said
chamber having a constant width/diameter.” The Court finds that Defendant’s construction is
unwarranted and would exclude a preferred embodiment. Rambus Inc. v. Rea, 731 F.3d 1248,
1253 (Fed. Cir. 2013) (“A claim construction that excludes the preferred embodiment ‘is rarely,
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if ever, correct and would require highly persuasive evidentiary support.’”) (quoting Adams
Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010)).
Specifically, the flight chamber of the preferred embodiment is described as a decahedron, not
circular. ’028 Patent at 7:20–22 (“The preferred embodiment of the flight chamber is shown with
ten sides . . . .”). Unlike a circle, a decahedron has a different width between its flat edges
compared to the width between its pointed edges. Defendant’s construction would exclude this
embodiment from the scope of the claims by requiring the width to be “constant.” Accordingly,
the Court rejects Defendant’s construction. Finally, the Court has considered the extrinsic
evidence submitted by the parties, and given it its proper weight in light of the intrinsic evidence.
c) Court’s Construction
In light of the evidence submitted by the parties, the phrase “said chamber having a
width” will be given its plain and ordinary meaning.
7. “said airflow being substantially constant across the width of the
chamber”
Disputed Term
“said airflow being
substantially constant
across the width of the
chamber”
Plaintiff’s Proposal
“the airflow velocity is
substantially uniform across the
width of the chamber”
Defendant’s Proposal
Term is indefinite.
a) The Parties’ Positions
Defendant contends that the phrase “said airflow being substantially constant across the
width of the chamber” is indefinite. (Dkt. No. 55 at 34.) Defendant argues that a person of
ordinary skill would not understand how airflow can be substantially constant across the entire
width of the chamber in light of the boundary layer effects. (Id.) Defendant contends that both
experts acknowledge that there is a boundary layer effect whereby the friction between the
airflow and the wall causes airflow to slow. (Id.) According to Defendant, this phrase is
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technically impossible to achieve, and therefore the corresponding claims are indefinite. (Id.)
Plaintiff responds that a person of ordinary skill in the art would understand the phrase
“said airflow being substantially constant across the width of the chamber” to have its plain and
ordinary meaning of “the airflow velocity is substantially uniform across the width of the
chamber.” (Dkt. No. 45 at 31.) Plaintiff argues that the specification describes the flight chamber
as having “a relatively flat airflow velocity profile across [its] width.” (Id.) (’028 Patent at 5:35–
40). Plaintiff contends that during the prosecution of the ’110 Patent, the applicants termed this
as a “uniform airflow profile.” (Id.) (Dkt. No. 45-3 at 12) (May 28, 1999 Preliminary
Amendment). Plaintiff argues that one of skill in the art would understand that “substantially
constant” in the claim refers to a relatively flat or relatively uniform velocity across the width of
the chamber. (Id.)
Plaintiff further argues that Defendant incorrectly seeks a precise numerical measurement
of what constitutes “substantially constant.” (Id. at 32.) Plaintiff contends that even though
precise numerical measurements are not required, the preferred embodiment of the ’028 Patent
provides one. (Id.) (citing ’028 Patent at 3:42–44, 4:29–31). Plaintiff also argues that Defendant
do not address the cited intrinsic record. (Id.) Plaintiff contends that whether the boundary layer
effects prevent the airflow from being “substantially constant across the width” is an issue of
infringement that the jury must decide. (Id.) Plaintiff also argues that Defendant and its expert
understood the concept of “airflow being substantially constant across the width of the chamber”
when they filed the petition for inter partes review and asserted that “airflow being constant
across the width … [was] well known in the prior art when the ’028 Patent was filed.” (Id.)
For the following reasons, the Court finds that the phrase “said airflow being
substantially constant across the width of the chamber” is not indefinite and should be given
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its plain and ordinary meaning.
b) Analysis
The phrase “said airflow being substantially constant across the width of the chamber”
appears in claims 18, 19, and 43 of the ’028 Patent. The Court finds that the phrase is used
consistently in the claims and is intended to have the same general meaning in each claim. The
Court further finds that the disputed phrase, when read in light of the specification delineating
the patent and the prosecution history, informs, with reasonable certainty, those skilled in the art
about the scope of the invention. Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124
(2014).
Prior to Nautilus, a claim was indefinite only if a challenger could prove, by clear and
convincing evidence, that it was “not amenable to construction” or was “insolubly ambiguous.”
Halliburton Energy Servs., Inc. v. M-I, LLC, 514 F.3d 1244, 1249–50 (Fed. Cir. 2008) (citing
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)). In Nautilus,
the Supreme Court stated that the new “reasonable certainty” standard “mandates clarity while
recognizing that absolute precision is unattainable.” Nautilus, 134 S. Ct. at 2124. Accordingly,
the Federal Circuit has held that a term of degree is not inherently indefinite. Interval Licensing
LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014).
According to Defendant, the phrase is indefinite because boundary layer effects make it
technically impossible to achieve a constant airflow across the width of the chamber. (Dkt. No.
55 at 34.) The Court disagrees with Defendant’s analysis because the specification provides
concrete examples that indicate with reasonable certainty the scope of the disputed phrase. The
specification states that the diameter of the flight chamber is between 10 and 13 feet. ’028 Patent
at 5:49-51. Given this width, the parties appear to agree that the boundary layer would be a very
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small percentage of the width of the chamber. 3 Thus, a person of ordinary skill in the art would
understand that it is technically possible for the airflow to be “substantially constant” across the
width of the chamber. In other words, a person of ordinary skill in the art would understand that
the use of the word “substantially” accounts, at least in part, for the boundary layer effect.
Indeed, in discussing the airflow, the specification states the following:
The shape of the inlet contraction allows a relatively smooth airflow to enter the
flight chamber. This reduces the amount of turbulence in the flight chamber,
thereby adding to the enjoyment of the flight experience. It also results in a
relatively flat airflow velocity profile across the width of the flight chamber. This
eliminates areas of the flight chamber having differing airflow velocities which
might otherwise cause the user to “fall off” the supporting airflow column.
’028 Patent at 5:35–43. Thus, the phrase “substantially constant across the width of the chamber”
refers to preventing the user from falling off the airflow column by providing a constant airflow
velocity up to the boundary layer. Indeed, the specification states that what the prior art lacked
was a flight chamber that provided “improved airflow control and stability.” ’028 Patent at 2:39.
The specification discloses fulfilling this need by providing an airflow that fully supports a user.
’028 Patent at Abstract (“Airflow sufficient to fully support a user within the flight chamber is
induced by a plurality of fans connected above the flight chamber through a duct.”), 3:42–44
(“The airflow velocity in the flight chamber is approximately 120+ mph, which will fully
support a user.”), 8:32–34 (“Once supported in the airflow, a user may perform all of the
maneuvers which a skydiver could otherwise only perform during an actual freefall.”).
Therefore, contrary to Defendant’s contention, the phrase “said airflow being
3
The parties’ experts agree that there is a boundary layer that includes the airflow velocity
dropping to zero at the wall. (Dkt. No. 55-2 at 10-11 (August 25, 2015 Deposition of Raymond
Whipple)); (Dkt. No. 55-9 at 13-14 (Declaration of Dr. Werner Dahm)). Plaintiff’s expert further
testified that the boundary layer is a very small dimension and is in the range of a fraction of an
inch. (Dkt. No. 55-2 at 11-12) (August 25, 2015 Depo. of Raymond Whipple at 66:16-21, 67:1117). Similarly, Defendant agreed at the claim construction hearing that the boundary layer drops
off quickly.
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substantially constant across the width of the chamber” does not make the claim technically
impossible. Accordingly, the Court finds that the disputed phrase when read in light of the
specification delineating the patent and the prosecution history, informs, with reasonable
certainty, those skilled in the art about the scope of the invention. Nautilus Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). Finally, the Court has considered the remaining
extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic
evidence.
c) Court’s Construction
In light of the evidence submitted by the parties, the phrase “said airflow being
substantially constant across the width of the chamber” will be given its plain and ordinary
meaning.
.
V.
CONCLUSION
The Court adopts the above constructions. The parties are ordered that they may not
refer, directly or indirectly, to each other’s claim construction positions in the presence of the
jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion,
other than the actual definitions adopted by the Court, in the presence of the jury. Any reference
to claim construction proceedings is limited to informing the jury of the definitions adopted by
the Court.
It is SO ORDERED.
SIGNED this 3rd day of January, 2012.
SIGNED this 17th day of December, 2015.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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