Whirlpool Corporation v. Ahmet Matt Ozcan d/b/a discountfilter
MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 12/28/2016. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
AHMET MATT OZCAN d/b/a
WEI, ET AL.,
PAVEL WATER FILTRATION, INC. and
HENRY H. PAVEL,
Civil Action No. 2:15-cv-2103-JRG
Civil Action No. 2:16-cv-229-JRG
Civil Action No. 2:16-cv-146-JRG
MEMORANDUM OPINION AND ORDER
Before the Court is the Joint Motion for Relief re: Claim Construction Proceedings (Dkt.
No. 108) filed by Plaintiff Whirlpool Corporation (“Whirlpool”) and Defendants Pavel Water
Filtration, Inc. and Henry H. Pavel (collectively, “Pavel”). The Motion notes that the claims of
the single patent at issue in this case, U.S. Patent No. 7,000,894 (“the ʼ894 Patent”), have
previously been construed by this Court in Whirlpool Corporation v. TST Water, LLC, Case No.
2:15-cv-1528, Dkt. No. 59 (“the TST Water case”). As such, Whirlpool and Pavel ask the Court
to apply that previous construction—as well as the briefing, evidence, and hearing transcript
related to that construction—as if it had been entered in the present case, thus eliminating the
need for further claim construction proceedings in the present case.
However, also before the Court is the Joint Claim Construction and Prehearing Statement
(Dkt. No. 107) filed by Plaintiff Whirlpool and Defendants Tianjin Jinghai Yunda Industry and
Trade Co, Ltd. a/k/a Yunda Industry and Trade Co. d/b/a Yunda Filter Co. (“Yunda”), Wayne
Wei, and Rose Lu. 1 In that Statement, Defendant Yunda stipulates that the Court’s claim
construction in TST Water should apply as if entered in this case except for the Court’s
construction of the term “about 2 cm.” As to that term, Plaintiff Whirlpool contends that no
construction is necessary; however, Defendant Yunda argues that the term is indefinite. 2
Given the narrow issue presented to the Court for claim construction, the Court ordered
expedited claim construction briefing and held a hearing on December 19, 2016, on the issue of
whether the term “about 2 cm” in Claims 1 and 27 of the ʼ894 Patent is indefinite.
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112, ¶ 2 (2006). 3 A claim, when viewed in light of the intrinsic
evidence, must “inform those skilled in the art about the scope of the invention with reasonable
certainty.” Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). If it does not,
the claim fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is
indefinite is determined from the perspective of one of ordinary skill in the art as of the time the
patent application was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure
of any claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at
2130 n.10; Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1343 (Fed. Cir. 2016).
“[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc. v.
Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
As noted in the Responsive Claim Construction Brief filed by Defendants Yunda, Wei, and Lu, the individual
defendants Wei and Lu rely entirely on Yunda for defending this lawsuit. (Dkt. No. 121, at 1 n.1.) As such, the
Court refers only to Defendant Yunda in this Order.
Defendant Yunda argues that the term “about 2 cm” is indefinite, but does not provide an alternative construction
for the Court to consider.
Although the Leahy-Smith America Invents Act enacted in 2011 amended § 112 slightly, the amended version
does not apply to patent applications filed before September 16, 2012. Nautilus Inc. v. Biosig Instruments, Inc., 134
S. Ct. 2120, 2125 n.1 (2014).
The disputed term, found in Claims 1 and 27, is “about 2 cm.”
Plaintiff’s Proposed Construction
Plain and ordinary meaning, no construction
Defendant Yunda’s Proposed Construction
Alternatively, “approximately 2 centimeters.”
Claim 1, as amended after reexamination, 4 recites:
1. An end piece for operatively engaging a head assembly, the head assembly
comprising one or more valves, for the treatment and control of fluid passing
through the head assembly, said end piece comprising:
A. an end piece wall;
B. an inlet fitting having a cam surface, said inlet fitting having a longitudinal
C. an outlet fitting; and
D. a protrusion having a longitudinal axis;
Wherein said inlet fitting, said outlet fitting, and said protrusion extend from
said end piece wall, wherein said protrusion is positioned between said
inlet and said outlet fittings, wherein the distance from said longitudinal
axis of said inlet to said longitudinal axis of said outlet is less than the
distance from said longitudinal axis of said inlet to said longitudinal axis
of said protrusion, and wherein the distance from said longitudinal axis of
said inlet to said longitudinal axis of said protrusion is greater than the
distance from said longitudinal axis of said outlet to said longitudinal axis
of said protrusion, wherein the distance from said longitudinal axis of said
inlet to said longitudinal axis of said outlet is about 2 cm, and wherein the
distance from said longitudinal axis of said inlet to said longitudinal axis
of said protrusion is about 2 cm, and wherein the distance from said
longitudinal axis of said outlet to said longitudinal axis of said protrusion
is about 2 cm, and wherein at least a portion of said cam surface is
vectored from said longitudinal axis of said inlet fitting.
In short, the disputed term is used in Claims 1 and 27 to describe the spatial relationship
between the longitudinal axes of three components of the claimed end piece in Claim 1 (and the
claimed cartridge in Claim 27)—namely, the distance between the “inlet fitting” and the “outlet
fitting” (L1), the distance between the “inlet fitting” and the “protrusion” (L2), and the distance
The amendments made during reexamination are underlined.
between the “outlet fitting” and the “protrusion” (L3). The claims require that each distance (L1,
L2, and L3) be “about 2 cm” in length. The claims further require that L1 be less than L2 and
that L2 be greater than L3.
a. The Parties’ Positions
Plaintiff Whirlpool contends that the term “about 2 cm” informs those skilled in the art
about the scope of the invention with reasonable certainty when the term is viewed in the context
of the intrinsic evidence. (Dkt. No. 118, at 11.) Specifically, Plaintiff argues that the use of the
term “about” signifies to one of skill in the art that exactitude is not required. (Id. at 11.) Plaintiff
further notes that the specification employs the word “about” to describe each of the relevant
distances, as well as to describe other dimensions not claimed here. (Id. at 11.) Finally,
Whirlpool notes that the three claimed distances can be of different lengths and still all be “about
2 cm.” (Id. at 13.)
Defendant Yunda responds with two primary arguments as to why the term “about 2 cm”
is indefinite. First, pointing to the relative lengths of the distances (i.e., the requirements that L1
be less than L2 and L2 be greater than L3), Yunda argues that it is unclear as to how “about 2
cm” can be both less than and greater than “about 2 cm.” (Dkt. No. 121, at 5.) Second, Yunda
argues that Plaintiff improperly broadened the scope of its claims during reexamination by
adding the phrase “said longitudinal axis.” (Id. at 7.) According to Yunda, the amendments
changed the length of L2. Id.
Plaintiff Whirlpool replies that the patent’s specification provides embodiments that
illustrate how the three distances may be different lengths, but nonetheless still all be “about 2
cm.” (Dkt. No. 123, at 1.) To Yunda’s second argument, Plaintiff replies that the amendments
made during reexamination served only to clarify the claims but not broaden them. (Id. at 1.)
Specifically, Plaintiff notes that the specification consistently uses the longitudinal axes of the
three structures as the reference points for measuring the distances between each structure. (Id. at
In the TST Water case, this Court construed the term “about 2 cm” as having its plain
meaning. Although the parties in the prior case did not address the issue of indefiniteness, after
hearing arguments regarding indefiniteness in this case, the Court finds no reason to depart from
its prior construction.
Having considered the arguments presented by the Parties, the Court finds that Yunda has
failed to meet the high burden necessary to establish that the relevant claims are indefinite.
Instead of submitting evidence, such as an expert declaration, to demonstrate the understanding
of a person of ordinary skill in the art, Yunda relies entirely on attorney argument based on the
patent’s intrinsic evidence. The Court finds such argument unpersuasive.
First, Yunda’s principal argument that the three relevant distances cannot have differing
lengths and still all be “about 2 cm” fails by its own terms. Since exactitude is not required by
use of the term “about,” the claim limitations regarding differing lengths do not conflict with the
requirement that each distance also be “about 2 cm.”
Yunda’s second argument regarding the amendment made during reexamination also fails
to establish that the claim is indefinite. First, the longitudinal axis of the inlet fitting is used as
the reference point for measuring distances from the inlet to other structures multiple times in the
original claim language. Further, the patentee consistently used the longitudinal axes of the three
components (the inlet, the outlet, and the protrusion) as the reference points for measuring the
distances between each of the three structures. (ʼ894 Patent, 5:42–59.) Finally, Figure 2A
illustrates that the distances L1, L2, and L3 are measured using the longitudinal axes as the
points of reference. As such, a person of skill in the art would understand that “about 2 cm” is
used to describe the distance between the longitudinal axes of the inlet fitting and the other
Accordingly, the Court finds that Yunda has not established by clear and convincing
evidence that the term “about 2 cm” is indefinite. This fully addresses the issues raised in the
Joint Claim Construction and Prehearing Statement (Dkt. No. 107).
Since Defendant Yunda has failed to present sufficient evidence to show that the term
“about 2 cm” is indefinite, the issue of indefiniteness need not be addressed at the previously
scheduled claim construction hearing set for January 10, 2017. As no further claim construction
issues have been raised, the Court hereby CANCELS the claim construction hearing previously
scheduled to be held on January 10, 2017.
Given that all parties have otherwise stipulated that this Court’s previous construction of
the claim terms should apply, the Court hereby adopts in full the constructions set forth in its
Memorandum Opinion and Order of July 22, 2016, in the TST Water case. (Dkt. No. 59 in 2:15cv-1528.) Thus, the Joint Motion for Relief re: Claim Construction Proceedings filed by Plaintiff
and the Pavel Defendants in this case (Dkt. No. 108) is effectively GRANTED.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the
Parties are hereby ORDERED, in good faith, to mediate this case with the mediator previously
appointed herein. As part of such mediation, each party shall appear by counsel and by at least
one corporate officer possessing sufficient independent authority and control to unilaterally make
binding decisions for the corporation adequate to address any good faith offer or counteroffer of
settlement that might reasonably arise during such mediation. Failure to do so shall be deemed
by the Court as a failure to mediate in good faith and may subject that party to such sanctions as
the Court deems appropriate. No party shall unilaterally terminate or exit the mediation session
without the approval of the mediator. Otherwise the current rules for mediation in this district
shall apply to all parties.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 28th day of December, 2016.
UNITED STATES DISTRICT JUDGE
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