Leader Development Industrial Corp. v. Intercrown Enterprise, Ltd.
Filing
75
CLAIM CONSTRUCTION OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 7/26/2019. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
LEADER DEVELOPMENT INDUS.
CORP.,
Plaintiff,
v.
INTERCROWN ENTERPRISE, LTD.,
Defendant.
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Case No. 2:18-CV-00254-JRG
CLAIM CONSTRUCTION OPINION AND ORDER
In this patent case, Leader Development Industrial Corp. alleges Intercrown Enterprise, Ltd., infringes certain claims of U.S. Patent 7,832,453. The parties now dispute the
scope of six terms or phrases from the asserted claims, and Intercrown alleges two of the
terms are indefinite. Having considered the parties’ claim construction briefing and arguments of counsel during a June 24, 2019 hearing, the Court construes the disputed claim
terms as follows.
I.
BACKGROUND
The technology concerns window coverings, such as curtains and blinds. According
to the ’453 Patent, conventional bladed curtains (often commonly referred to as venetian
blinds) have two adjusting mechanisms: One controls the rise of fall of the curtain, and
another controls the angle of the blades once they are in the desired vertical position. But
the patent describes this use of two mechanisms as difficult to assemble and expensive.
’453 Patent at 1:20–33.
To address these disadvantages, the ’453 Patent teaches a single mechanism that
controls both the vertical position of the curtain and the angle of the blades. Using a pulling
string, the blades may be first raised or lowered to a desired position. See ’453 Patent figs.
4 & 5 (showing the blades in raised and lowered positions, respectively). After the desired
position is reached, the same pulling string may be used to adjust the blade angle. See id.
figs. 3 & 4 (showing the blades at different angles).
The key to this functionality is the use of two adjacent cylindrical elements, a “winding tube” disposed with a “rubbing wheel,” in combination with the pulling string and a
suspending string. The ’453 Patent teaches an end of the pulling string connected to the
bottom blade. 1 The pulling string is wound around the winding tube, with the opposing end
of the string either free or connected to a winder. ’453 Patent fig.3 (showing a manual string
22); id. fig.4 (showing the pulling string 21 connected to a winder 2). As the string is pulled,
the bottom blade changes position, either lifting or releasing the other blades as it moves
up or down. Because the pulling string is wound around the winding tube, pulling the string
causes the winding tube to rotate, which in turn rotates the connected rubbing wheel. And
because each blade connects to a suspending string hung from the rubbing wheel, the blades
rotate as well, at least until they contact one another. After the bottom blade is moved to
1
The patent does not expressly teach that the pulling string is connected to a bottom blade, but this is
inherent given the described operation of the device and the figures.
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the desired position relative to the rail, the user can move the pulling string in the opposite
direction to rotate and open the blades the desired amount. See generally ’453 Patent at
2:42–3:6 (describing operation of certain embodiments).
Claim 1 recites
a winding tube rotatably disposed in an upper rail of a curtain having curtain blades;
a rubbing wheel rotatable with the winding tube;
a pulling string controlling the rise and fall of the curtain,
with the pulling string having a first end and a second
end, with the pulling string being wound around the
winding tube such that the winding tube is intermediate
the first and second ends of the pulling string, with the
first and second ends of the pulling string being spaced
from the winding tube, with a portion of the pulling
string which is intermediate the winding tube and the
second end being passed through the curtain blades,
with the second end of the pulling string having different spacing from the winding tube when the pulling
string is wound on the winding tube;
. . . ; and
a suspending string for insertion of the curtain blades, with
the suspending string having a top end hung on the rubbing wheel, thereby during the rise and fall of the curtain blades, the suspending string is capable of being actuated in the rotating direction of the winding tube, allowing for adjustment of the angle of the curtain blades,
with the first end of the pulling string being pulled to
rotate the winding tube to control the rise and fall of the
curtain and to rotate the rubbing wheel.
’453 Patent at 3:22–4:7.
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II.
GENERAL LEGAL STANDARDS
“[T]he 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).
As such, if the parties dispute the scope of the claims, the court must determine their meaning. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1317 (Fed.
Cir. 2007); Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996), aff’g, 52
F.3d 967, 976 (Fed. Cir. 1995) (en banc).
When construing claims, “[t]here is a heavy presumption that claim terms are to be
given their ordinary and customary meaning.” Aventis Pharm. Inc. v. Amino Chems. Ltd.,
715 F.3d 1363, 1373 (Fed. Cir. 2013) (citing Phillips, 415 F.3d at 1312–13). Courts must
therefore “look to the words of the claims themselves . . . to define the scope of the patented
invention.” Id. (citations omitted). The “ordinary and customary meaning of a claim term
is the meaning that the term would have to a person of ordinary skill in the art in question
at the time of the invention, i.e., as of the effective filing date of the patent application.”
Phillips, 415 F.3d at 1313. This “person of ordinary skill in the art is deemed to read the
claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.
Intrinsic evidence is the primary resource for claim construction. See Power-One,
Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1348 (Fed. Cir. 2010) (citing Phillips, 415 F.3d
at 1312). For certain claim terms, “the ordinary meaning of claim language as understood
by a person of skill in the art may be readily apparent even to lay judges, and claim
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construction in such cases involves little more than the application of the widely accepted
meaning of commonly understood words.” Phillips, 415 F.3d at 1314; see also Medrad,
Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (“We cannot look at the
ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history.”). But for claim
terms with less-apparent meanings, courts consider “those sources available to the public
that show what a person of skill in the art would have understood disputed claim language
to mean . . . [including] the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.
III.
LEVEL OF ORDINARY SKILL IN THE ART
The level of ordinary skill in the art is the level of skill of a hypothetical person who
is presumed to have known the relevant art at the time of the invention. In resolving the
level of ordinary skill, courts consider the types of and solutions to problems encountered
in the art, the speed of innovation, the sophistication of the technology, and the education
of workers active in the field. In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995). Importantly,
“[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Here, the parties dispute the proper level of ordinary skill in the art. Leader contends
a person of ordinary skill must either (1) have at least a bachelor’s degree in mechanical
engineering, or (2) at least two years of experience in the design and analysis of mechanical
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devices. Pl.’s Open’g Br. [Dkt. # 56] at 3–4. Intercrown responds that a person without
relevant actual experience will not understand practical design considerations for window
coverings, and argues that an ordinarily skilled artisan would have at least three years of
experience in the design and fabrication of blinds. Def.’s Resp. Br. [Dkt. # 60] at 6. Neither
party provides any underlying rationale for the level of skill it claims is correct.
The Court, however, need not resolve the level of ordinary skill to resolve the scope
of the disputed terms, because there is no dispute presented by the parties that depends on
which skill level is most proper. In other words, regardless of whether Leader’s or Intercrown’s level of ordinary skill is most proper, the outcome is the same concerning construction of the disputed terms.
IV.
CONSTRUCTION OF DISPUTED TERMS
A.
“curtain” (Claims 1–2, 4–7, 9, and 11)
Pl.’s Proposed Construction
Def.’s Proposed Construction
Indefinite. To the extent this term is conPlain and ordinary meaning; no construction
struable, a type of drapery, not a venetian
necessary; not indefinite.
blind.
1.
Whether the term is indefinite
“Curtain” appears prolifically throughout the claims and, more generally, the ’453
Patent. See, e.g., ’453 Patent at (54) (“Adjusting Structure of a Curtain for Adjusting the
Angle of Curtain Blade”); id. at 1:20–23 (describing conventional curtains as having adjustable curtain blades); id. at 3:22 (reciting, in the preamble of Claim 1, “[a]n adjustable
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structure of a curtain”). Yet despite such prolific use of the term, Intercrown contends “curtain” is indefinite. A “curtain,” says Intercrown, is “a cloth or cloth-like material that is
hung from a curtain rod,” whereas the figures show what an ordinarily skilled artisan would
consider a venetian blind with slats. Def.’s Resp. Br. [Dkt. # 60] at 28. Intercrown thus
argues the claims are indefinite and, alternatively, that “curtain” excludes a venetian blind. 2
Id. at 29.
But Intercrown’s reasoning ignores the Federal Circuit’s mandate not to read the
claims in a vacuum. See Medrad, Inc., 401 F.3d at 1319 (“We cannot look at the ordinary
meaning of the term . . . in a vacuum.”). Although “curtain” may refer, in a vacuum, to a
cloth window covering without slats, there is no such vacuum here. As Intercrown
acknowledges, all the figures show slats, which the patent calls “blades.” Indeed, the very
purpose of the patent is to provide for altering both the vertical position and angle of the
blades using a single mechanism. ’453 Patent at 1:31–33. Construing “curtain” as simply
cloth hung on a rod would make the purpose of the patent nonsensical. Given the content
of the written description and figures, “curtain” is not indefinite.
2.
Claim scope
Intercrown is correct that some construction is warranted. Leader contends, without
support, that the term should be given its plain and ordinary meaning, but Intercrown’s
extrinsic evidence shows the patent uses “curtain” more broadly. See, e.g., Kollman Decl.
2
During the hearing, however, Intercrown argued that “curtain” should be construed as a venetian blind.
H’rg Tr. (June 24, 2019) [Dkt. # 73] at 9:15–16.
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[Dkt. # 60-2] ¶¶ 15–16 (noting that “[a] curtain does not have slats or blades that are tiltable[,] “[a] curtain typically has curtain material that hangs from a curtain rod[,]” and that
the patent illustrates a venetian blind). Here, it is enough to say that the ’453 Patent uses
“curtain” to mean, more generally, a “window covering.” The type of window covering is
then set forth by the claim limitations.
The Court therefore construes “curtain” to mean “window covering.”
B.
“rubbing wheel” (Claims 1, 4–7, 9, and 11)
Pl.’s Proposed Construction
Def.’s Proposed Construction
a wheel having a diameter that is larger
than a diameter of the winding tube about
Plain and ordinary meaning; no construction which the suspending string is hung to obnecessary.
tain greater friction between the suspending string and the rubbing wheel. The rubbing wheel rubs the winding tube.
Intercrown’s proposed construction for “rubbing wheel” has three components.
First, Intercrown urges that the diameter of the wheel must be larger than the diameter of
the winding tube. Second, Intercrown contends “rubbing wheel” must be construed such
that the suspension string is hung for the purpose of obtaining greater friction. Finally,
Intercrown says the rubbing wheel must rub the winding tube.
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1.
Whether the rubbing wheel must have a diameter larger than a diameter of the winding tube
Intercrown contends the proper scope of “rubbing wheel” requires this size relationship with the winding tube. To support that contention, Intercrown stresses that the patent
teaches “in the present invention, the rubbing wheel is a little bigger than the winding tube.”
Def.’s Resp. Br. [Dkt. # 60] at 10 (quoting ’453 Patent at 3:10–13 (emphasis added)). This
language, says Intercrown, makes the size requirement a critical structural requirement of
the rubbing wheel. Id. Leader responds that the claims do not require a size relationship
with the other claim elements, and that the “present invention” language is referring to the
specifically described embodiment. Pl.’s Reply [Dkt. # 66] at 6.
Use by the patentee of language such as “the present invention includes . . .”, “the
present invention is . . .”, or “all embodiments of the present invention are . . .” can, but
does not always, limit the scope of the claims. See Pacing Techs., LLC v. Garmin Int’l, Inc.,
778 F.3d 1021, 2024 (Fed. Cir. 2015); Verizon Servs. Corp., 503 F.3d at 1308 (“When a
patent thus describes the features of the ‘present invention’ as a whole, this description
limits the scope of the invention.”). But when the intrinsic evidence does not support applying the limitation to the entire patent despite the patentee’s use of such phrases, there is
no limiting effect. See Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1136–
37 (Fed. Cir. 2011); Voda v. Cordis Corp., 536 F.3d 1311, 1320–22 (Fed. Cir. 2008) (rejecting any limiting effect of “present invention” because the specification did not uniformly
refer to the invention as being so limited and the prosecution history did not reveal such a
limitation).
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Here, the patentee uses “present invention” in a definitional sense. The language
follows immediately after the statement that “the size of the winding tube 3 and the rubbing
wheel 31 can be different” and thus modifies that statement. Although Leader argues that
the applicant referred to many different embodiments as “the present invention,” H’rg Tr.
(June 24, 2019) [Dkt. # 73] at 55:14–57:3, the patent refers to different embodiments as
being “in accordance with the present invention,” see, e.g., ’453 Patent at 2:7–25 (emphasis
added). This is an important distinction meaning only that the described embodiment is
within the scope of the claims.
Intercrown also claims the prosecution history of related foreign applications requires this construction. Id. at 11–12. Specifically, the claims of those related foreign patents and applications require that the rubbing wheel’s diameter is greater than the associated winding tube’s diameter. See, e.g., U.K. Patent GB 2 440 740 [Dkt. # 60-25] at
Leader_0000667 (reciting, in Claim 1, that “the diameter of each rubbing wheel is greater
than the diameter of the associated winding tube”); Australian Appl. No. AU 2006203460
82 [Dkt. # 60-26] at Leader_0000309 (same). Thus, says Intercrown, the claims of the ’453
Patent must also have this feature. Def.’s Resp. Br. [Dkt. # 60] at 12.
But while “statements made before foreign patent offices are sometimes relevant to
interpreting the claims,” see Starhome Gmbh v. AT&T Mobility LLC, 743 849, 858 (Fed.
Cir. 2014), Intercrown would have the Court import amendments made to claims in the
related foreign applications. Intercrown has not cited and the Court is unaware of any authority justifying that as part of the claim construction process. The Court therefore rejects
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this part of Intercrown’s argument.
2.
Whether a suspending string must be hung about the rubbing wheel
to obtain greater friction
Intercrown proposes an intent element for the construction of “rubbing wheel.” But
such language departs from the notion that apparatus claims only cover structure. 3 Accordingly, the Court rejects this component of Intercrown’s proposed construction.
3.
Whether the rubbing wheel must “rub” the winding tube
Intercrown argues the rubbing wheel “must rub the winding tube as the name of this
term implies . . . .” Id. at 14. To construe the term otherwise, says Intercrown, would not
give effect to all the claim terms. Id. Leader counters that the ’453 Patent does not address
or discuss “rubbing” of these elements, and suggests any “rubbing” by the wheel occurs
with the suspending string rather than the winding tube. Pl.’s Reply [Dkt. # 63] at 6–7
(calling Intercrown’s assumption about the rubbing wheel “conjecture that could easily be
explained with reference to rubbing the ‘suspending string’”).
There are three problems with this aspect of Intercrown’s proposed construction.
First, apparatus claims cover structure, not the structure’s function. See Hewlett-Packard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (“[A]pparatus claims
cover what a device is, not what a device does.” (emphasis in original)). Here, however,
Intercrown asks the Court to impose functional language where none otherwise exists.
3
But see, e.g., Invensas Corp. v. Renesas Elecs. Corp., No. 11-448-GMS, 2013 WL 3753621 at *2, nn.10–
12 (D. Del. July 15, 2013). In Invensas Corp., the court concluded “[t]here is no rule barring a patentee
from including an intent requirement in its claims,” but the language at issue was functional in nature. Here,
the disputed term is purely structure, and there is no reason to impose any intent element on that structure.
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Second, the patent describes an alternative embodiment in which the winding tube is connected to the rubbing wheel through a gear, which cuts against Intercrown’s “rubbing” requirement. ’453 Patent at 3:13–16 (“[T]he direction of the rubbing wheel 31 can be reversed to that of the winding tube 3 (for example, the winding tube 3 and the rubbing wheel
31 are connected by a gear).”).
Finally, even if the Court’s construction were to include some functional language,
“rubs” is a poor choice. To “rub” means to move surfaces against each other rather than
together. See, e.g., Rub, Webster’s II New Riverside Univ. Dictionary 1023 [Dkt # 60-14]
at ICN0005532 (“to cause to move along a surface with friction and pressure”); Rub, The
American Heritage Dictionary 1075 (2d college ed. 1991) [Dkt # 60-14] at ICN0005522
(same definition); Rub, Webster’s 3d New Int’l Dictionary (2002) [Dkt # 60-14] at
ICN0005545 (“to move along the surface of a body with pressure”). The Detailed Description, however, describes that the rubbing wheel and winding tube rotate together—i.e.,
without “rubbing.”
4.
Construction
Having found the patentee’s “present invention” statement definitional, the Court
construes “rubbing wheel” to mean “a wheel that is a little bigger than the winding tube.”
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C.
“winding tube” (Claims 1–2, 4–7, 9, and 11)
Pl.’s Proposed Construction
Def.’s Proposed Construction
a tube that is longer than the rubbing wheel
and has a diameter about which the first
Plain and ordinary meaning; no construction pulling string is wound that is smaller in dinecessary.
ameter than the diameter of the rubbing
wheel about which the suspension string is
hung
The parties have two disputes concerning “winding tube.” First, the parties dispute
whether there is a size-limiting relationship between the winding tube and the rubbing
wheel—specifically, whether the winding tube must be longer and have a smaller diameter
than the rubbing wheel. Second, the parties dispute whether the proper construction requires that the winding tube must have a string wound about its diameter.
1.
Whether the winding tube must be longer than and have a smaller
diameter than the rubbing wheel
Intercrown’s arguments with respect to this proposed requirement tracks its argument for the size requirement of the winding tube. See Part IV.B.1 supra. Nothing in the
patent or the prosecution history, however, suggests that the winding tube must be longer
than the rubbing wheel. Moreover, because the construction of “rubbing wheel” already
accounts for the required size relationship with the winding tube, the Court rejects the notion that this term needs further construction relating to the sizes of these two elements.
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2.
Whether the winding tube must have a string wound about its diameter
Intercrown argues that both the patent and prosecution history require this as part of
the construction of “winding tube” despite the fact that Claim 1 already recites similar
language. Def.’s Resp. Br. [Dkt. # 60] at 8–10. For example, Intercrown notes that the
specification describes a “pulling string wound around the winding tube,” Def.’s Resp. Br.
[Dkt. # 60] at 8 (citing the abstract), and that “[a] pulling string 21 is wound around the
winding tube.” Id. (citing ’453 Patent at 2:33–34).
But Claim 1 already recites this structure, and Intercrown does not explain why it
should also be included in the construction of this term. Intercrown says its proposed construction is consistent with the specification and prosecution history, but consistency is not
by itself a reason to construe claim language. Ultimately, the Court finds no reason to incorporate that requirement into the meaning of “winding tube” when Claim 1 recites similar language elsewhere.
3.
Construction
The Court construes “winding tube” to have its plain and ordinary meaning.
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D.
“the pulling string being wound around the winding tube such
that . . . the second end of the pulling string having different spacing
from the winding tube when the pulling string is wound on the winding
tube” (Claim 1)
Pl.’s Proposed Construction
Def.’s Proposed Construction
The pulling string must be wound on the
winding tube so the winding tube is spaced
from and between the opposite ends of the
Plain and ordinary meaning; no construction
pulling string. The pulling string is wound
necessary.
around the winding tube so that more of the
pulling string is wound onto the winding
tube as the curtain is raised.
1.
Whether the disputed phrase requires that the pulling string must be
wound on the winding tube so the winding tube is spaced from and
between the opposite ends of the pulling string
Claim 1 already requires that “the pulling string hav[e] a first end and a second end,
with the pulling string being wound around the winding tube such that the winding tube is
intermediate the first and second ends.” ’453 Patent at 3:27–30. While there are differences
between this language and the first sentence of Intercrown’s proposed construction (e.g.,
“wound around” versus “wound on,” first and second ends versus “opposite ends,” “intermediate” versus “spaced from and between”), they convey the same meaning. Therefore,
the Court need not change the claim language. See U.S. Surgical Corp. v. Ethicon, Inc., 103
F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed
meanings and technical scope, to clarify and when necessary to explain what the patentee
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covered by the claims . . . . It is not an obligatory exercise in redundancy.”).
2.
Whether the pulling string is wound around the winding tube so that
more of the pulling string is wound onto the winding tube as the curtain is raised
With the second sentence of its proposed construction, Intercrown suggests that the
winding tube gathers up the pulling string, like a fishing rod reeling in fishing line. Intercrown acknowledges the figures don’t show this, H’rg Tr. (June 24, 2019) [Dkt. # 73] at
22:1–23:1, but relies on its expert’s declaration about the plain and ordinary meaning of
winding tube for this interpretation, id. at 23:1–11. Intercrown also contends the prosecution history supports this part of its construction, claiming the patentee made this distinction relative to the prior art and that the examiner interpreted the claims this way in the
Notice of Allowance. Def.’s Resp. Br. [Dkt. # 60] at 8–10.
But contrary to Intercrown’s assertions, the patentee did not argue that the pulling
string accumulates on the winding tube, or anything resembling that. Rather, the patentee
argued:
•
“[C]laim 1 has been amended to more clearly define that the winding tube
and rubbing wheel are rotated by pulling on the pulling string.” Prosecution
History Pt. I [Dkt. # 60-22] at Leader_0000071.
•
“[Chen] provides no teaching or suggestion that pulling the string could also
rotate a wheel for adjusting the angle of the curtain blades. . . .” Prosecution
History Pt. II [Dkt. # 60-23] at Leader_0000110.
•
“[T]he recited guide 7 which is not taught or suggested by Chen allows the
winding wheel 3 to be generally parallel to the pulling string 21 as it leaves
the winder 2 so that the rubbing wheel 31 can be orientated parallel to suspending string 5.” Id. at Leader_000110–111.
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•
“[Ipekgil’s] guides . . . are not located intermediate the winding tube and the
first end of the pulling string . . . and thus is not within the recitations of claim
1.” Prosecution History Pt. III [Dkt. # 60-24] at Leader_0000141.
None of this compels a conclusion that the claims require the winding tube to gather up the
pulling string.
Nor is Intercrown’s expert’s opinion helpful given that the device could not work in
the manner taught by the patent if the pulling string were to accumulate on the winding
tube. The winding tube would have to rotate at an angular velocity greater than the corresponding linear velocity with which the user pulls the end of the pulling string. Given that
movement of the pulling string drives rotation of the winding tube—not the other way
around—the second sentence of the Intercrown’s construction cannot be an accurate interpretation of the phrase.
Intercrown also contends that the patentee’s failure to respond to the examiner’s
Reasons for Allowance means the patentee acquiesced to the examiner’s interpretation of
the claims. Def.’s Resp. Br. [Dkt. # 60] at 8–10. But an applicant’s silence in response to
the examiner’s Reasons of Allowance is not a clear disavowal of claim scope. Salazar v.
Procter & Gamble Co., 414 F.3d 1342, 1348 (Fed. Cir. 2005); accord Elkay Mfg. Co. v.
Ebco Mfg. Co., 192 F.3d 973, 978–79 (Fed. Cir. 1999) (finding disavowal based on the
written description and the applicant’s statements during prosecution when the applicant
did not respond to the examiner’s Statement of Reasons for Allowance). 4
4
Even if the examiner’s reasons for allowance might somehow be limiting, the Court does not find that the
examiner’s “360 degrees” statement requires the pulling string to accumulate on the winding tube. The best
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3.
Construction
Because the Court rejects both aspects of Intercrown’s proposed construction, the
Court construes the term “the pulling string being wound around the winding tube such
that . . . the second end of the pulling string having different spacing from the winding tube
when the pulling string is wound on the winding tube” to have its plain and ordinary meaning.
E.
“pulling string being directed by the guide generally tangentially onto
the winding tube” (Claim 1)
Pl.’s Proposed Construction
Def.’s Proposed Construction
Indefinite. To the extent this term can be
construed, it requires the guide to be positioned below and to the side of the winding
Plain and ordinary meaning; no construction
tube between a winder and the winding
necessary; not indefinite.
tube to direct the pulling string to pass
along the winding tube at an angle as
shown in Fig. 7.
In addition to requiring a winding tube and a pulling string, Claim 1 requires “a
guide abutting the pulling string spaced from and intermediate the winding tube and the
explanation of the examiner’s statement, considering the specification, is that the pulling string is directed
vertically upward by the guide on one side of the winding tube and then vertically downward on the opposing side before extending through the blades. In contrast, Chen’s pulling string is generally horizontal before
contacting the winding tube and then extends vertically downward through the blades. See U.S. Patent
7,168,476 fig.1. Thus, Chen’s pulling string only extends 270 degrees around the winding tube before extending through the blades.
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first end of the pulling string, with the pulling string being directed by the guide generally
tangentially onto the winding tube.” ’453 Patent at 3:38–41 (emphasis added). The parties’
dispute centers on the clarity and scope of “generally tangentially,” a phrase that otherwise
appears only once in the patent. See id. at 2:47–50 (“As shown in FIG. 7, the pulling string
21 extending from the winder 2 is directed by a guide 7 generally tangentially onto the
winding tube 3.” (emphasis added)); see also id. fig.7 (showing a profile view of the pulling
string at an angle from straight down).
Intercrown has two complaints about this phrase. First, Intercrown complains it is
indefinite. Second, if the language is not indefinite, Intercrown says the language must be
construed to limit the position of the guide and the angle of the pulling string relative to
the winding tube’s axis to that shown in Figure 7.
1.
Whether the phrase is indefinite
When filed, the underlying application did not recite a “guide” or describe the relationship between the pulling string and the winding tube. See generally Prosecution History
Pt. I [Dkt. # 60-22] at Leader_0000001–22. During prosecution, however, the applicant
amended the specification and claims to recite the guide and refer to the orientation between the pulling string and the guide as “generally radially.” Prosecution History Pt. II
[Dkt. # 60-23] at Leader_0000107–108. But the patent examiner rejected the amendments
as not supported by the written description. Id. at Leader_0000120. In response, the applicant amended the language to replace “radially” with “tangentially,” which overcame the
rejection. Prosecution History Pt. III [Dkt. # 60-24] at Leader_0000136–137.
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“[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 skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). The claims “must be precise enough to afford
clear notice of what is claimed,” but that consideration must be made while accounting for
the inherent limitations of language. Id.
Terms of degree are not inherently indefinite. See Sonix Tech. Co. v. Publ’ns Int’l,
Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017). To the contrary, “[a]s long as claim terms [afford
clear notice of what is claimed], relative terms and words of degree do not render patent
claims invalid.” One-E-Way, Inc. v. I.T.C., 859 F.3d 1059, 1063 (Fed. Cir. 2017). But ultimately there must be some standard for measuring the term of degree. Biosig Instruments,
Inc. v. Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015).
Here, Intercrown asserts the ’453 Patent provides no standard against which to
measure how far the pulling string can be moved from the position shown in Figure 7 while
remaining within the scope of the claims. Def.’s Resp. Br. [Dkt. # 60] at 18. Leader responds that words like “generally” and “substantially” are acceptable, commonly used
terms to avoid a strict numerical boundary for a limitation. Pl.’s Reply [Dkt. # 63] at 8.
Leader urges that a person of ordinary skill “would recognize that the angle between the
front and back portions of the pulling string allows the pulling string to be efficiently directed by the guide onto the winding tube, while not interfering with the back portion of
the pulling string.” Pl.’s Open’g Br. [Dkt. # 56] at 12 (citing Pratt Decl. [Dkt. # 56-2] ¶¶ 35–
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36, 42).
To resolve the parties’ dispute, the Court must first consider the meaning of “tangentially” as used in the patent. Intercrown recognizes that “tangentially” means “merely
touching or slightly connected” and that a tangent “touches but does not intersect,” but
Intercrown contends these meanings do not apply to the patent’s subject matter. Def.’s
Resp. Br. [Dkt. # 60] at 18. Leader, through its expert, contends “tangentially” means the
portion of the pulling string between the guide and the point of contact with the winding
tube is within a plane that is normal to the rotational axis of the winding tube. See, e.g.,
Pratt Decl. [Dkt. # 56-2] ¶¶ 36–37. Leader further contends that “generally tangentially”
includes tangentially and any other way the pulling string smoothly contacts the winding
tube’s curved surface. Id. ¶ 38. The parties agree, however, that “tangentially” does not
mean “radially.” 5 Def.’s Resp. Br. [Dkt. # 60] at 19–20; Pl.’s Reply [Dkt. # 63] at 9.
In geometry, a line may be tangential to a circle, in which case it intersects the circle
at a point. Here, considering the winding tube as a cylinder with a circular cross-section
and the portion of the pulling string between the winding tube and the guide as a line
5
During the hearing, Defendant suggested that the examiner rejected “generally radially” under § 112 because the figures showed the pulling string at a slight angle from vertical. See, e.g., Hr’g Tr. (June 24, 2019)
[Dkt. # 73] at 79:18–81:10 (asserting “the radius direction -- is clearly the up and down or vertical direction,
which is not shown here. . . . [I]t’s pretty much acknowledged that there’s some slight angle.”); id. at 82
(“So generally radially would encompass that slight variation which they said isn’t covered by . . . Figure
7.”); id. at 89–90 (“the radius runs perfectly vertically. So it’s from the center of the tube to the very bottom
of the tube . . . in a straight line. . . . [T]he string here is directed to the circumference. It isn’t directed to
the radius. It isn’t directed up and down. It’s at this slight angle.”). But “radially” in the context of the ’453
Patent means from the center of the winding tube in any direction—not just “up and down”—within a plane
normal to the rotational axis of the tube. In the Court’s view, the examiner properly rejected the use of
“radially” under § 112 because the figures do not show the pulling string intersecting the center of the tube.
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segment, “tangentially” means that, during the winding, the portion of the pulling string
between the guide and the winding tube occupies a reference plane intersecting the winding
tube and to which the winding tube’s rotational axis is normal—i.e., in the figures, a vertical
plane. More simply, the pulling string is directed onto the winding tube in line with the
rotational direction of the tube.
The harder question is the impact of “generally” on the word “tangentially.” When
a “word of degree” is used, the court must determine whether the patent provides “some
standard for measuring that degree.” Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325,
1332 (Fed. Cir. 2010). If such a standard is not expressly provided, that standard might be
found in the function associated with the limitation. See, e.g., Exmark Mfg. Co. v. Briggs
& Stratton Power Prods. Grp., LLC, 879 F.3d 1332, 1346 (Fed. Cir. 2018) (concluding the
disputed phrase was not indefinite because a skilled artisan would understand the scope of
the phrase considering the function of the limitation in question). Alternatively, the patent
can include enough examples to inform a skilled artisan about the scope of the language.
Enzo Biochem, 599 F.3d at 1335 (noting that if the intrinsic evidence provides “a general
guideline and examples sufficient to enable a person of ordinary skill in the art to determine
[claim scope], the claims are not indefinite”). Regardless of the method used, the question
is whether an ordinarily skilled artisan would understand the claim scope considering the
specification. Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826
(Fed. Cir. 1984).
Here, Intercrown presents evidence that the applicable meaning of “generally” is
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“for the most part” and “in disregard of particular instances and details.” See, e.g., Generally, Webster’s II New Riverside Univ. Dictionary 524 [Dkt # 60-18] at ICN0005529; Generally, The American Heritage Dictionary 552 (2d college ed. 1991) [Dkt # 60-18] at
ICN0005519 (same definition). Intercrown also contends the level of ordinary skill requires at least some actual experience in the design and fabrication of window coverings.
Def.’s Resp. Br. [Dkt. # 60] at 6–7. The Court concludes that such an artisan would understand that “generally tangentially” simply means, for the most part, in line with the rotational direction of the winding tube and simply envisions some deviation from exactly tangential. 6
2.
Claim scope
The Court rejects Intercrown’s proposed construction for two reasons. First, having
resolved the meaning of “generally tangentially,” the Court need not limit the scope of the
phrase to exactly what is shown in Figure 7, and it is not necessary to impose further positional limitations on the guide. The claim language only limits the position of the guide as
abutting the pulling string and intermediate to the winding tube and the first end of the
pulling string.
Second, contrary to Intercrown’s proposed construction, the guide does not require
using a winder. In fact, the claims suggest otherwise. Claim 1 recites the guide without
specifying the use of a winder or a manual string. Claim 2 depends from Claim 1 and recites
a winder. ’453 Patent at 4:8–12. And Claim 3 depends from Claim 1 and recites that the
6
The Court would reach the same conclusion under Leader’s proposed level of ordinary skill.
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pulling string is a manual string. Id. at 4:13–14. This creates a presumption that Claim 1
does not include a winder, which contravenes Intercrown’s construction. See CurtissWright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006) (“‘[C]laim
differentiation’ refers to the presumption that an independent claim should not be construed
as requiring a limitation added by a dependent claim.”).
3.
Construction
For these reasons, the Court rejects Intercrown’s construction and construes “pulling
string being directed by the guide generally tangentially onto the winding tube” to mean
“pulling string being directed by the guide generally in line with the rotational direction of
the winding tube.”
F.
“the first end of the pulling string being pulled to rotate the winding tube
to control the rise and fall of the curtain and to rotate the rubbing wheel”
(Claim 1)
Pl.’s Proposed Construction
Def.’s Proposed Construction
The first end of the pulling string must be
pulled to control the rise of the curtain and
Plain and ordinary meaning; no construction also must be pulled to control the fall of the
curtain. The rubbing wheel must rotate
necessary.
when the winding tube rotates due to the
pulling on the first end of the pulling string.
The parties dispute two issues concerning this phrase. First, the parties dispute
whether rotation of the winding tube can only be caused by pulling the first end of the
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pulling string. Second, they dispute whether the rubbing wheel must rotate when the winding tube rotates and, by extension, when the first end of the string is pulled.
1.
Whether rotation of the winding tube can only be caused by pulling
the first end of the pulling string
Intercrown asks the Court to clarify that the first end of the pulling string is pulled
to rotate the winding tube to control the rise and fall of the curtain. Def.’s Resp. Br. [Dkt.
#60] at 27. Leader replies that there is no reason to depart from the claim language. Pl.’s
Reply [Dkt. # 63] at 10.
While the Detailed Description describes the pulling string, only the claims reference a “first end.” Specifically, Claim 1 recites
a pulling string . . . having a first end and a second end, with the pulling string being wound around the winding tube such that the winding
tube is intermediate the first and second ends of the pulling string,
with the first and second ends of the pulling string being spaced from
the winding tube . . . .
’453 Patent at 3:26–37 (emphasis added). Based on this language, the pulling string has a
terminal first end and a portion between the first end and the winding tube. This means the
winding tube may rotate when any part of the pulling string between the first end and the
winding tube is pulled. Rather than requiring the first end to be pulled to control the curtain’s position, the disputed phrase recites the result of changing the position of the first
end of the pulling string during normal operation: the rise and fall of the curtain. But because pulling any portion of the pulling string between the first end and the winding tube
causes the same result, Intercrown’s proposed construction is too narrow.
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2.
Whether the rubbing wheel must rotate when the winding tube rotates
due to pulling the first end of the pulling string
Leader claims there is no reason to depart from the claim language, which recites
“the first end of the pulling string being pulled . . . to rotate the rubbing wheel.” Nothing
in the written description contradicts this claim language or suggests a different result. See,
e.g., ’453 Patent at 2:44–47 (“The winding tube will be rotated by pulling the pulling string
21.”); id. at 3:7–8 (“Since the rubbing wheel 31 rotates along with the winding tube
3 . . . .”). In fact, Leader agrees that the rubbing wheel must rotate when the winding tube
rotates. Def.’s Reply [Dkt. # 63] at 7 (“[T]he patent discloses a structure where the rubbing
wheel and winding tube are contiguous and rotate together.”).
3.
Construction
This phrase describes the result of pulling the first end of the pulling string. The
Court construes “the first end of the pulling string being pulled to rotate the winding tube
to control the rise and fall of the curtain and to rotate the rubbing wheel” to mean “the first
end of the pulling string being pulled to rotate the winding tube, which controls the rise
and fall of the curtain, and rotates the rubbing wheel.” For clarity, pulling the first end of
the string in the same direction does not cause both the rise and fall of the curtain.
V.
THE EFFECT OF PLAINTIFF’S ALLEGED ACQUIESCENCE
Intercrown argues that Leader’s acquiescence prior to this lawsuit prevents Leader
from challenging Intercrown’s proposed constructions. Specifically, Intercrown alleges
that, in responding to a 2014 letter from Leader claiming infringement, Intercrown
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explained its noninfringement position, which was based on similar (if not identical) positions now taken during claim construction. In an April 2015 letter, Leader disagreed with
Intercrown’s noninfringement position, and Intercrown again responded. After that second
response, the parties did not communicate further about infringement until this lawsuit.
Intercrown alleges this constitutes acquiescence by Leader to Intercrown’s 2015 claim construction positions and that Leader disavowed claim scope regarding “generally tangentially.” See generally Def.’s Br. [Dkt. # 60] at 29–30.
But Intercrown provides no authority for the proposition that acquiescence applies
to a litigation opponent’s claim construction positions. Rather, Intercrown cites Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305 (Fed. Cir. 2010), in which the appellate
court affirmed a summary judgment that the plaintiff was equitably estopped from pursuing
its infringement claim. The case did not concern claim construction. Without some authority supporting the application of acquiescence to claim construction, the Court must reject
this argument.
VI.
CONCLUSION
The Court adopts the constructions above for the disputed terms of the Asserted
Patents. The Court ORDERS each party not to refer, directly or indirectly, to its own or
any other party’s claim construction positions in the presence of the jury. Likewise, the
Court ORDERS the parties to refrain from mentioning any part of this opinion, other than
the actual positions adopted by the Court, in the presence of the jury. Any reference to
claim construction proceedings is limited to informing the jury of the positions adopted by
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the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 26th day of July, 2019.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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