Oceaneering International, Inc. v. Trendsetter Engineering, Inc.

Filing 64

MEMORANDUM OPINION ON CLAIM CONSTRUCTION (Signed by Judge Sim Lake) Parties notified. (aboyd, 4)

United States District Court
Southern District of Texas

ENTERED

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION

December 20, 2016
David J. Bradley, Clerk

OCEANEERING INTERNATIONAL, INC.,§
§

Plaintiff,

§

v.

§
§
§

TRENDSETTER ENGINEERING, INC.,

§

CIVIL ACTION NO. H-16-2797

§

Defendant.

§

MEMORANDUM OPINION ON CLAIM CONSTRUCTION

This

is

a

patent

infringement

suit

filed

by

Oceaneering

International, Inc. ( "Oceaneering") against Trendsetter Engineering,
Inc.

("Trendsetter"), involving United States Patent No. 7,380,835

(" '835 patent") .

The plaintiff,

Oceaneering,

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.

See

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.").

I.

Background

In support of its preferred constructions,
filed

Plaintiff Oceaneering' s

( "Oceaneering' s Opening Brief")

Oceaneering has

Opening Claim Construction Brief
(Docket Entry No. 44),

Plaintiff

Oceaneering's Reply Claim Construction Brief ("Oceaneering's Reply

Brief") (Docket Entry No. 52), and Plaintiff Oceaneering' s Response
to

Trendsetter's

Supplemental

("Oceaneering's Response Brief")

Claim

Construction

(Docket Entry No. 56).

Brief

In support

of its preferred constructions, Trendsetter has filed Responsive
Claim Construction Brief of Defendant Trendsetter Engineering, Inc.
("Trendsetter's

Response

Brief")

(Docket

Supplemental

Claim Construction Brief

Engineering,

Inc.

("Trendsetter's

of

Entry

No.

Defendant

Supplemental

46)

and

Trendsetter

Brief")

(Docket

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

Agreed Construction
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:
Disputed Term

Court's Construction

flow path sleeve

a component that at least partially surrounds
the slideable flow path

it

no construction required

move longitudinally [toward/away
from]

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.
-2-

II.

Legal Standard for Claim Construction

In Markman,

116

S.

Ct.

at

1387,

the

Court

held

that

the

construction of patent claims is a matter of law exclusively for the
court.

Accordingly,

particular

claim

when

terms

the

the

parties

court

dispute

should

the

consider

meaning

the

of

parties'

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
"ordinary and

customary meaning"

of

the

disputed

claim

terms.

Phillips v. AWH Corporation, 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)
(en bane), cert. denied, 126 S. Ct. 1332 (2006)

(quoting Vitronics

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
claim

terms,

meaning.

an

inventor's

Teleflex,

Inc. v.

1313, 1325 (Fed. Cir. 2002)
Tractor Farm & Family Ctr.,

claim

terms

take

on

their

ordinary

Ficosa North America Corp.,

299 F.3d

(citing York Products, Inc. v. Central
99 F.3d 1568, 1572

(Fed.

Cir. 1996).

Courts indulge a "heavy presumption" that a claim term carries its
ordinary and customary meaning.

Id.

(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
-3-

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.

Phillips, 415

"[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."

Id.

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
words.
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,
the
prosecution
history,
and
extrinsic
evidence
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
point.

For

example,

a

term

may

not

carry

its

ordinary

and

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.

ccs Fitness,

See Hormone Research Foundation, Inc. v.
-4-

Genentech,

Inc.,

904

F.2d

1558,

1563

(Fed.

Cir.

1990),

cert.

dismissed, 111 S. Ct. 1434 (1991)

("It is a well-established axiom

in patent

is

law

that

a

patentee

free

to

be

his

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)

See Thorner

669 F.3d 1362, 1365

(explaining that only two exceptions exist to the

general rule that terms carry their ordinary and customary meaning:
"(1)

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
'ordinary'

meaning does not resolve the parties'

Micro Int'l Ltd.
1351,

1361

(Fed.

v.

dispute."

Beyond Innovation Technology Co.,

Cir.

2008).

Ordinary

inadequate when "parties dispute[]

meaning

may

02

521 F.3d
also

be

not the meaning of the words

themselves, but the scope that should be encompassed by th[e] claim
language."

Id.
-5-

There are two types of evidence upon which courts rely in
conducting claim construction inquiries:

(1)

intrinsic evidence

(e.g., the language of the claim itself, the patent specification,
and

the

prosecution history of

the

patent)

and

( 2)

extrinsic

evidence (evidence external to the patent and prosecution history
such

as

dictionaries,

testimony).
at 1583).

treatises,

and

expert

and

inventor

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."
A.

Id. at 1324.

Intrinsic Evidence

The language of the claim itself is "'of primary importance[]
in the effort to ascertain precisely what it is that is patented.'"
Phillips,

415 F.3d at 1312

568, 570 (1876)).

(quoting Merrill v.

Yeomans,

94 U.S.

This is "[b]ecause the patentee is required to

'define precisely what his invention is.'"

Id.

(quoting White v.

Dunbar, 7 S. Ct. 72, 75 (1886)).
While the claim language itself should be the court's primary
focus,

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
to

the

meaning

Vitronics,

of

a

disputed

90 F.3d at 1582).

term. '"

Id.

at

1315

(quoting

While "[i]t is therefore entirely
-6-

appropriate for a court,

when conducting claim construction,

to

rely heavily on the written description for guidance as to the
meaning of the claims,"

id.

at 1317,

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.

See

Dow Chemical Co. v. United States, 226 F.3d 1334, 1342 (Fed. Cir.
2000)

("[A]s a general rule claims of a patent are not limited to

the preferred embodiment

. or to the examples listed within the

patent specification.").

"'The construction that stays true to the

claim

language

description of
construction.'"
v.

and
the

most

naturally

invention will be,

with

the

in the end,

patent's

the correct

Phillips, 415 F.3d at 1316 (quoting Renishaw PLC

Marposs Societa per Azioni,

1998)).

aligns

158

F.3d 1243,

1250

(Fed.

Cir.

"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."

Retractable Technologies,

Inc. v. Becton, Dickinson and Co., 653 F.3d 1296, 1305 (Fed. Cir.
2011).
B.

Extrinsic Evidence

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.

See Phillips,

The court may look

to dictionaries, especially technical dictionaries, and treatises
"if the court deems it helpful in determining 'the true meaning of
-7-

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.

See id.

at 1319 ("[E]xtrinsic evidence may be useful to the court, but it
is unlikely to result in a reliable interpretation of patent claim
scope

unless

evidence.") .

considered

in

the

context

of

the

intrinsic

" [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."

III.

Construction of Disputed Claim Terms

The parties dispute the construction of:
(2)

Id. at 1321.

"coupled to."

(1) "flow path" and

The court addresses each disputed term below.

"Flow Path"

A.

Disputed Term
"flow path"

Oceaneering's Construction

term

"flow path"

appears

(1)

No construction needed;

(2)

The

a single large passage for
fluid flow

Trendsetter's Construction

A passage for fluid flow.

throughout

the

'835

patent.

Oceaneering argues that its proposed construction is supported by
( 1)

the patent

title,

"Single Bore High Flow Junction Plate;"

(2)

the Background of the Invention section,

distinguishing the

disclosed invention from prior art that utilized "multiple, smallbore hydraulic couplers .

. to create a sufficiently large flow
-8-

path;"

( 3)

the claimed advantage of the described invention as

"afford[ing] a large unobstructed flow path;" and (4) the singular
use of

"flow path"

in the described embodiments . 1

Oceaneering

essentially argues that the patentee disavowed the full scope of
the term.
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,
might be
considered broad enough to encompass the feature in
question.
SciMed,
common

242 F.3d at 1341.
to

three

patents

The court in SciMed construed claims
for

balloon dilation

catheters.

The

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
its

conclusion.

First,

the

court

observed

that

the

patent's

abstract identified the inflation lumen as "coaxial rather than
dual

in structure."

Second,

the court noted that the patents

distinguished prior art on the basis of the use of dual lumens and

1

0ceaneering's Opening Brief, Docket Entry No. 44, pp. 11-12.
-9-

pointed out the advantages of coaxial lumens.

Third,

the court

noted that the coaxial configuration was characterized as being
part of the "present invention."
the

statement

that

the

Finally,

coaxial

arrangement

the court focused on
was

found

in

"all

embodiments of the present invention" as identifying a "necessary
element of every variant of the claimed invention."
SciMed, although distinguishable, provides guidance.

First,

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
including
hydraulic

Second,

the

"junction plates
couplers

that

patent

[that]
are

distinguishes

prior art,

rely on multiple,

small-bore

ganged

together

to

create

a

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
depicting the

"present invention"

2

Abstract, '835 patent,
Docket Entry No. 1-1, p. 2.

display a

Exhibit

A to

single

flow path. 4

Original

Complaint,

3

Background of the Invention, '835 patent, Exhibit A to
Original Complaint, Docket Entry No. 1-1, p. 13 lines 1:25-27,
2:3-4.
4

'835 patent, Figs. 2-3,
Docket Entry No. 1-1, pp. 4-5.

Exhibit A to Original Complaint,
-10-

Finally,

although the specification makes no reference to "all

embodiments of the present invention" the depicted embodiments in
which

the

Together,

flow

path

is

visible

contain

a

passage. 5

single

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
flow paths.

Trendsetter also

argues

that

because

the

patent

acknowledges that the prior art possessed a "large flow path," that
Trendsetter argues

limitation cannot apply.

that

"flow path"

therefore cannot be limited to a single large passage.
The use of an indefinite article to modify a component is not
dispositive.
described as

"That
a

'a'

rule,"

or 'an'
and

can mean 'one or more'

" [t] he

exceptions

to

this

is best
rule

are

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).

"[W]hen claim

language or context suggests an ambiguity in application of the
general

meaning

of

an

article,

th [e]

court

undertakes

an

examination of the written description .

. to ascertain whether

to

KCJ

limit

the

meaning

of

'a'

or

'an.'"

Corp.

Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000).

5

Id., Figs. 1-10, pp. 3-12.
-11-

v.

Kinetic

"[T]he use

of a definite article ('said' or 'the') to refer back to an initial
indefinite

article

does

not

implicate,

singular."

Baldwin, 512 F.3d at 1343.

let

alone

mandate

the

"Moreover, standing alone,

a disclosure of a preferred or exemplary embodiment encompassing a
singular element does not
Corp., 223 F.3d at 1356.

disclaim a

plural

embodiment."

But the '835 patent goes further.

KCJ
The

'835 patent expressly disparages prior art that used hydraulic
couplers to combine multiple flow paths for "increas [ ing] the cost"
of

junction plates. 6

Moreover,

figures

depicting

"the present

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,

as the

patent asserts, offer distinct advantages over a large flow path
created by joining multiple small paths as well as a single small
flow path.

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

6

Background of the Invention,
'835 patent, Exhibit A to
Original Complaint, Docket Entry No. 1-1, p. 13 lines 1:25-27.
7

Trendsetter's argument that the term "large" is indefinite is
also an argument against the patent's validity and not against the
proposed construction.
-12-

Finally,

Trendsetter

argues

that

Oceaneering's

proposed

construction would import a claim from the patent's specification.
The court recognizes that
the distinction between using the specification to
interpret
the meaning of
a
claim and importing
limitations from the specification into the claim can be
a difficult one to apply in practice.
See Comark
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
specification").
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
path.
B.

"Coupled to"
Disputed Term

"Coupled to"

Oceaneering's Construction
No construction needed

Trendsetter
construed

to

"coupled to"

argues

mean

that

directly

the

Trendsetter's Construction
Directly Joined

term

joined.

"coupled

to"

Oceaneering

should be given its ordinary meaning,

should be

argues

that

which would

include both direct and indirect connection. 8

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.').")
-13-

The court begins with the presumption that terms take their
ordinary meaning absent clear intent by the patentee to redefine
them.

Trendsetter argues that all of the examples of coupling

found

in

the

'835

patent

involve

direct

physical

contact.

Trendsetter argues that the patent therefore "teaches" that the
patentee

eschews

the

inclusive

meaning

of

"couple

to."

But

Trendsetter does not explain how direct coupling is essential to
the disclosed

invention or indicate how direct

distinguish the invention from prior art.

coupling would

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
must

be

[a

"indicated

direct]
it

could

connection"
accept

and

(but

noted

does

not

coupled,'" neither of which is the case here.

that

the

prefer)

patentee
'directly

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"
patent

meant

"adjacent

and

directly

used in a medical device
connected

to."

Boston

Scientific SciMed, Inc. v. ev3, Inc., 502 F. Supp. 2d 931, 937 (D.
Minn.

2007 ) .

Neither

party

has
-14-

offered

evidence

from

the

prosecution history of the '835 patent.

In another case, the court

found that a direct connection was required in order to achieve the
OPTi,

"principal goal of the patent."

Inc.

v.

Advanced Micro

Devices, Inc., Civil Action No. 2:07-CV-278(TJW), 2009 WL 2424029,
at *8

(E.D. Tex. Aug.

Trendsetter has not shown that

5, 2009).

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

term as

involving

"physical

contact" submitted unrebutted testimony that a person of ordinary
skill

would

include

not

understand

capacitive

physical contact.

the

coupling,

term

which

"conductive

could

be

coupling"

achieved

to

without

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
technical terms.
Inc.,

160

F.3d

See Anderson v. International Engineering
1345,

1348-49

(Fed.

9

Cir.

1998)

&

Mfg. ,

("[D]ictionary

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.
Sauder Mfg.
Co.
v.
J
Squared,
Inc.,
No.
3:14CV962,
WL 11117228, at *1 (N.D. Ohio June 9, 2015).
-15-

mean
case
were
See
2015

definitions

of

ordinary words

are

rarely dispositive

meaning[s] in a technological context.

of

their

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

'835 patent,

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

that

calls

the

case

construction.

law

cited

by

Trendsetter

for

special

Although the court declines to construe the term, it

concludes that "coupled to" may refer to either direct or indirect
coupling.
IV.

Order

In light of the clear intrinsic evidence the court did not
need to resort to extrinsic evidence.
above,

the

court

adopts

the

following

For the

reasons

constructions

stated

for

the

disputed terms:

Construction

Disputed Term
Flow Path

a single large passage for fluid flow

Coupled To

No construction required (includes both
direct and indirect coupling)

SIGNED at Houston, Texas, on this 20th day

LAKE
UNITED STATES DISTRICT JUDGE
-16-