Oceaneering International, Inc. v. Trendsetter Engineering, Inc.
MEMORANDUM OPINION ON CLAIM CONSTRUCTION (Signed by Judge Sim Lake) Parties notified. (aboyd, 4)
United States District Court
Southern District of Texas
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
December 20, 2016
David J. Bradley, Clerk
OCEANEERING INTERNATIONAL, INC.,§
TRENDSETTER ENGINEERING, INC.,
CIVIL ACTION NO. H-16-2797
MEMORANDUM OPINION ON CLAIM CONSTRUCTION
International, Inc. ( "Oceaneering") against Trendsetter Engineering,
("Trendsetter"), involving United States Patent No. 7,380,835
(" '835 patent") .
and the defendant,
Trendsetter, disagree about the meaning of several terms used in the
patent and have asked the court to construe the disputed terms.
Markman v. Westview Instruments, Inc., 116 S. Ct. 1384, 1387 (1996)
("[T]he construction of a patent, including terms of art within its
claim, is exclusively within the province of the court.").
In support of its preferred constructions,
Plaintiff Oceaneering' s
( "Oceaneering' s Opening Brief")
Opening Claim Construction Brief
(Docket Entry No. 44),
Oceaneering's Reply Claim Construction Brief ("Oceaneering's Reply
Brief") (Docket Entry No. 52), and Plaintiff Oceaneering' s Response
("Oceaneering's Response Brief")
(Docket Entry No. 56).
of its preferred constructions, Trendsetter has filed Responsive
Claim Construction Brief of Defendant Trendsetter Engineering, Inc.
Claim Construction Brief
Entry No. 55)
The parties have also presented a Joint Claim Construction
Chart pursuant to which the parties have agreed to the construction
of the following term:
Terms to be Construed
slideable flow path
a slideable component that has a flow path
On December 13, 2016, the court held a Markman hearing on the
claim construction issues.
For the reasons stated at the hearing,
the court construed the following terms:
flow path sleeve
a component that at least partially surrounds
the slideable flow path
no construction required
move longitudinally [toward/away
no construction required
After carefully considering the parties' arguments, the evidence,
and the applicable law, the court construes the remaining disputed
claim terms as stated below.
Legal Standard for Claim Construction
construction of patent claims is a matter of law exclusively for the
proposed definitions, but must independently assess the claims, the
specification, and if necessary the prosecution history and relevant
extrinsic evidence, and declare the meaning of the disputed terms.
Exxon Chemical Patents, Inc. v. Lubrizol Corporation, 64 F.3d 1553,
1556 (Fed. Cir. 1995), cert. denied, 116 S. Ct. 2554 (1996).
Courts begin claim construction inquiries by ascertaining the
Phillips v. AWH Corporation, 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)
(en bane), cert. denied, 126 S. Ct. 1332 (2006)
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
In the absence of an express intent to impart a novel meaning to
1313, 1325 (Fed. Cir. 2002)
Tractor Farm & Family Ctr.,
Ficosa North America Corp.,
(citing York Products, Inc. v. Central
99 F.3d 1568, 1572
Courts indulge a "heavy presumption" that a claim term carries its
ordinary and customary meaning.
(citing CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
"[T]he 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."
F.3d at 1313.
"[T]he 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."
In some cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in
such cases involves little more than the application of
the widely accepted meaning of commonly understood
In such circumstances, general purpose
dictionaries may be helpful.
In many cases that give
rise to litigation, however, determining the ordinary and
customary meaning of the claim requires examination of
terms that have a particular meaning in a field of art.
Because the meaning of a claim term as understood by
persons of skill in the art is often not immediately
apparent, and because patentees frequently use terms
idiosyncratically, the court looks to "those sources
available to the public that show what a person of skill
in the art would have understood disputed claim language
to mean." .
. Those sources include "the words of the
claims themselves, the remainder of the specification,
concerning relevant scientific principles, the meaning of
technical terms, and the state of the art."
Id. at 1314 (citations omitted) .
Ascertaining a term's ordinary and customary meaning is the
starting point for claim construction but may not be the ending
customary meaning "if the patentee acted as his own lexicographer
and clearly set forth a definition of the disputed claim term in
either the specification or prosecution history."
Inc., 288 F.3d at 1366.
See Hormone Research Foundation, Inc. v.
dismissed, 111 S. Ct. 1434 (1991)
("It is a well-established axiom
or her own
lexicographer . . . and thus may use terms in a manner contrary to
or inconsistent with one or more of their ordinary meanings.").
Additionally, a claim term may be interpreted more narrowly than it
otherwise would if "the patentee distinguished the term from prior
art on the basis of a particular embodiment, expressly disclaimed
subject matter, or described a particular embodiment as important
to the invention."
CCS Fitness, 288 F.3d at 1366-67.
v. Sony Computer Entertainment America, LLC,
(Fed. Cir. 2012)
669 F.3d 1362, 1365
(explaining that only two exceptions exist to the
general rule that terms carry their ordinary and customary meaning:
when a patentee sets out a definition and acts as his own
lexicographer, or (2) when the patentee disavows the full scope of
a claim term either in the specification or during prosecution").
"A determination that a claim term 'needs no construction' or
has the 'plain and ordinary meaning' may be inadequate when a term
has more than one 'ordinary' meaning or when reliance on a term's
meaning does not resolve the parties'
Micro Int'l Ltd.
Beyond Innovation Technology Co.,
inadequate when "parties dispute
not the meaning of the words
themselves, but the scope that should be encompassed by th[e] claim
There are two types of evidence upon which courts rely in
conducting claim construction inquiries:
(e.g., the language of the claim itself, the patent specification,
prosecution history of
evidence (evidence external to the patent and prosecution history
Phillips, 415 F.3d at 1317 (citing Vitronics, 90 F.3d
The court is not required to consider these sources in
any particular order; "what matters is for the court to attach the
appropriate weight to be assigned to those sources in light of the
statutes and policies that inform patent law."
Id. at 1324.
The language of the claim itself is "'of primary importance
in the effort to ascertain precisely what it is that is patented.'"
415 F.3d at 1312
568, 570 (1876)).
(quoting Merrill v.
This is "[b]ecause the patentee is required to
'define precisely what his invention is.'"
(quoting White v.
Dunbar, 7 S. Ct. 72, 75 (1886)).
While the claim language itself should be the court's primary
other intrinsic sources can be helpful.
For example, the
specification "'is always highly relevant to the claim construction
analysis'" and can be either dispositive or "'the single best guide
90 F.3d at 1582).
While "[i]t is therefore entirely
appropriate for a court,
when conducting claim construction,
rely heavily on the written description for guidance as to the
meaning of the claims,"
it is important that the
specification be used only to interpret the meaning of a claim, not
to confine patent claims to the embodiments described therein.
Dow Chemical Co. v. United States, 226 F.3d 1334, 1342 (Fed. Cir.
("[A]s a general rule claims of a patent are not limited to
the preferred embodiment
. or to the examples listed within the
"'The construction that stays true to the
invention will be,
in the end,
Phillips, 415 F.3d at 1316 (quoting Renishaw PLC
Marposs Societa per Azioni,
"There is a fine line between construing the claims in
light of the specification and improperly importing a limitation
from the specification into the claims."
Inc. v. Becton, Dickinson and Co., 653 F.3d 1296, 1305 (Fed. Cir.
If the intrinsic evidence does not resolve the ambiguity in a
particular claim term, the court may look to extrinsic evidence to
help it reach a conclusion as to the term's meaning.
415 F.3d at 1317; Vitronics, 90 F.3d at 1583.
The court may look
to dictionaries, especially technical dictionaries, and treatises
"if the court deems it helpful in determining 'the true meaning of
language used in the patent claims.'"
(quoting Markman, 52 F.3d at 980).
Phillips, 415 F.3d at 1318
The court, however, must always
be mindful that extrinsic evidence may only supplement or clarify
not displace or contradict -- the intrinsic evidence.
at 1319 ("[E]xtrinsic evidence may be useful to the court, but it
is unlikely to result in a reliable interpretation of patent claim
" [H] eavy reliance on the dictionary divorced from the
intrinsic evidence risks transforming the meaning of the claim term
to the artisan into the meaning of the term in the abstract, out of
its particular context, which is the specification."
Construction of Disputed Claim Terms
The parties dispute the construction of:
Id. at 1321.
(1) "flow path" and
The court addresses each disputed term below.
No construction needed;
a single large passage for
A passage for fluid flow.
Oceaneering argues that its proposed construction is supported by
"Single Bore High Flow Junction Plate;"
the Background of the Invention section,
disclosed invention from prior art that utilized "multiple, smallbore hydraulic couplers .
. to create a sufficiently large flow
the claimed advantage of the described invention as
"afford[ing] a large unobstructed flow path;" and (4) the singular
in the described embodiments . 1
essentially argues that the patentee disavowed the full scope of
Oceaneering relies on SciMed Life Systems,
Inc. v. Advanced
Cardiovascular Systems, Inc., 242 F.3d 1337 (Fed. Cir. 2001), for
the proposition that
[w]here the specification makes clear that the invention
does not include a particular feature, that feature is
deemed to be outside the reach of the claims of the
patent, even though the language of the claims, read
without reference to the specification,
considered broad enough to encompass the feature in
242 F.3d at 1341.
The court in SciMed construed claims
patentee argued that its patents covered both adjacent lumen and
coaxial lumen arrangements.
The court disagreed, concluding that
the patent specifications led to "the inescapable conclusion" that
the asserted claims were limited to catheters with coaxial lumens.
The court relied on four portions of the patents at issue to reach
abstract identified the inflation lumen as "coaxial rather than
the court noted that the patents
distinguished prior art on the basis of the use of dual lumens and
0ceaneering's Opening Brief, Docket Entry No. 44, pp. 11-12.
pointed out the advantages of coaxial lumens.
noted that the coaxial configuration was characterized as being
part of the "present invention."
the court focused on
embodiments of the present invention" as identifying a "necessary
element of every variant of the claimed invention."
SciMed, although distinguishable, provides guidance.
although the '835 patent's abstract makes no mention of the flow
path component of the invention,
it follows the patent title in
referring to the disclosed invention as a "single bore high flow"
junction plate. 2
rely on multiple,
sufficiently large flow path, ' and identifies the advantage that it
"affords a large unobstructed flow path in a design that uses a
very simple latching mechanism." 3
Third, although the patent does
not characterize a particular type of flow path as being part of
the present invention, the figures in which a flow path can be seen
Abstract, '835 patent,
Docket Entry No. 1-1, p. 2.
flow path. 4
Background of the Invention, '835 patent, Exhibit A to
Original Complaint, Docket Entry No. 1-1, p. 13 lines 1:25-27,
'835 patent, Figs. 2-3,
Docket Entry No. 1-1, pp. 4-5.
Exhibit A to Original Complaint,
although the specification makes no reference to "all
embodiments of the present invention" the depicted embodiments in
these portions of the patent make clear the invention
does not include multiple flow paths.
Trendsetter responds that claim 17 cannot be limited to a
"single" flow path or a "large" flow path because the use of the
indefinite article "a[n]" before "flow path" allows for one or more
acknowledges that the prior art possessed a "large flow path," that
limitation cannot apply.
therefore cannot be limited to a single large passage.
The use of an indefinite article to modify a component is not
can mean 'one or more'
" [t] he
extremely limited," but a patentee may "'evince a clear intent'
to limit 'a' or 'an' to 'one.'"
Baldwin Graphic Systems, Inc. v.
Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008).
language or context suggests an ambiguity in application of the
examination of the written description .
. to ascertain whether
Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000).
Id., Figs. 1-10, pp. 3-12.
of a definite article ('said' or 'the') to refer back to an initial
Baldwin, 512 F.3d at 1343.
"Moreover, standing alone,
a disclosure of a preferred or exemplary embodiment encompassing a
singular element does not
Corp., 223 F.3d at 1356.
But the '835 patent goes further.
'835 patent expressly disparages prior art that used hydraulic
couplers to combine multiple flow paths for "increas [ ing] the cost"
junction plates. 6
invention" -- not just a preferred embodiment -- clearly show a
single flow path.
The patent therefore evinces a clear intent to
limit the device to a single flow path.
Trendsetter's argument that the claim cannot be limited to a
single large flow path because the prior art provided large flow
paths is not persuasive.
A single large flow path may,
patent asserts, offer distinct advantages over a large flow path
created by joining multiple small paths as well as a single small
At any rate, Trendsetter's argument ultimately goes not
to the construction but to the validity of the patent, an issue not
presently before the court. 7
Background of the Invention,
'835 patent, Exhibit A to
Original Complaint, Docket Entry No. 1-1, p. 13 lines 1:25-27.
Trendsetter's argument that the term "large" is indefinite is
also an argument against the patent's validity and not against the
construction would import a claim from the patent's specification.
The court recognizes that
the distinction between using the specification to
the meaning of
claim and importing
limitations from the specification into the claim can be
a difficult one to apply in practice.
Communications, Inc. v. Harris Corp., 156 F. 3d 1182,
1186-87 (Fed. Cir. 1998) ("there is sometimes a fine line
between reading a claim in light of the specification,
and reading a limitation into the claim from the
However, the line between construing
terms and importing limitations can be discerned with
reasonable certainty and predictability if the court's
focus remains on understanding how a person of ordinary
skill in the art would understand the claim terms.
Phillips, 415 F.3d at 1323.
The court concludes that a person of
ordinary skill reading the entire '835 patent would understand the
disclosed invention to be limited to the use of a single large flow
No construction needed
should be given its ordinary meaning,
include both direct and indirect connection. 8
See Oceaneering's Opening Brief, Docket Entry No. 44, p. 16
("This usage is consistent with the ordinary meaning of the term as
defined in general purpose dictionaries.
See, e.g., Ex. B
(American Heritage Dictionary, Second College Edition, Houghton
Mifflin Co. (1982), at 332) ('couple
v. -pled, -pling, -ples.
-tr. 1. To link together; connect.').")
The court begins with the presumption that terms take their
ordinary meaning absent clear intent by the patentee to redefine
Trendsetter argues that all of the examples of coupling
Trendsetter argues that the patent therefore "teaches" that the
Trendsetter does not explain how direct coupling is essential to
invention or indicate how direct
distinguish the invention from prior art.
In short, Trendsetter
does not show that a person of ordinary skill in the art reading
the patent would conclude that only direct coupling is permitted.
Trendsetter cites several cases in which courts defined the
term "coupled" as "directly connected" or "directly connecting."
These cases are distinguishable.
In one case, the court concluded
that the structure of the disclosed invention was such that "there
coupled,'" neither of which is the case here.
NuVasive, Inc. v.
Globus Medical, Inc., No. C.A. 10-849-LPS, 2013 WL 3705731, at *7
(D. Del. July 12, 2013).
In another case, the court relied on "the
prosecution history in particular," as well as intrinsic evidence,
to determine that the term "coupled"
used in a medical device
Scientific SciMed, Inc. v. ev3, Inc., 502 F. Supp. 2d 931, 937 (D.
2007 ) .
prosecution history of the '835 patent.
In another case, the court
found that a direct connection was required in order to achieve the
"principal goal of the patent."
Devices, Inc., Civil Action No. 2:07-CV-278(TJW), 2009 WL 2424029,
(E.D. Tex. Aug.
Trendsetter has not shown that
direct joining is required to achieve the principal goals of the
patent at issue.
The final relevant case 9 cited by Trendsetter involved the
phrase "conductively coupled" and turned on two distinct methods of
transmitting electrical signals.
See Greatbatch Ltd. v. AVX Corp.,
No. 13-723-LPS, 2015 WL 1383656, at *4-5 (D. Del. March 20, 2015).
The party seeking to construe the
contact" submitted unrebutted testimony that a person of ordinary
Trendsetter offered no such testimony.
Trendsetter objects to the use of a laymen's dictionary to
define "couple to."
The Federal Circuit has cautioned against the
use of non-scientific dictionaries to ascertain the meanings of
See Anderson v. International Engineering
The case cited by Trendsetter construing "coupled" to
"securely joined" is inapposite because the dispute in that
was over whether the two portions of the disclosed invention
"locked" and not over whether they were joined directly.
WL 11117228, at *1 (N.D. Ohio June 9, 2015).
meaning[s] in a technological context.
A word describing patented
technology takes its definition from the context in which it was
used by the inventor.").
However, neither party has argued that
"coupled to," as used in the
is a technical term.
Trendsetter argues instead that the patent teaches a limited use of
the term to refer to direct couplings.
The court is not convinced that the patentee intended "coupled
to" to have any special or technical meaning.
Nor is it convinced
Although the court declines to construe the term, it
concludes that "coupled to" may refer to either direct or indirect
In light of the clear intrinsic evidence the court did not
need to resort to extrinsic evidence.
a single large passage for fluid flow
No construction required (includes both
direct and indirect coupling)
SIGNED at Houston, Texas, on this 20th day
UNITED STATES DISTRICT JUDGE
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