Icon Health & Fitness v. Hoist Fitness Systems et al
Filing
115
MEMORANDUM DECISION AND ORDER - the court DENIES ICONs motion for partial summary judgment 22 and granting in part and denying in part 82 Motion for Summary Judgment. Signed by Judge Clark Waddoups on 7/6/2015. (jds)
IN THE UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF UTAH, NORTHERN DIVISION
ICON HEALTH & FITNESS, INC.,
MEMORANDUM DECISION
AND ORDER
Plaintiff,
v.
Case No. 1:10-cv-193 CW
HOIST FITNESS SYSTEMS, INC., et al.,
Judge Clark Waddoups
Defendants.
INTRODUCTION
ICON Health & Fitness, Inc. asserts that Vectra Fitness, Inc.1 has infringed three patents
pertaining to a cable crossover exercise machine. Two of those patents are before the court for claim
construction and cross motions for summary judgment. They are U.S. Patent No. 6,238,323 (“the
‘323 Patent”) and U.S. Patent No. 7,282,061 (“the ‘061 Patent”).
ICON seeks partial summary judgment that Vectra’s VX-FT exercise machine infringes
claim 1 of the ‘061 Patent. In turn, Vectra seeks summary judgment of non-infringement for both
the ‘323 and ‘061 Patents. It contends it designed around ICON’s patents and therefore its products
do not read on each of the elements. For the reasons discussed below, the court denies ICON’s
motion for partial summary judgment and grants in part and denies in part Vectra’s motion for
summary judgment.
1
Defendants Hoist Fitness Systems, Inc., Torque Fitness, LLC, and Tuff Stuff Fitness
Equipment, Inc. have previously been dismissed. Vectra is the only remaining defendant.
BACKGROUND
The ‘061 Patent is a continuation patent and the ‘323 Patent is the parent patent. “The
patents claim an exercise apparatus comprising a resistance assembly, two adjustable extension arms
that pivot on an axis substantially parallel to the axis of rotation of a pulley at the end of each arm,
and a cable linking the resistance assembly to the arms.” Free Motion Fitness, Inc.2 v. Cybex Int’l,
Inc., 423 F.3d 1343, 1345 (Fed. Cir. 2005). The invention “improved the traditional cable crossover
device by taking . . . a very large device requiring two separate and opposed weight stacks and
converting it into a much smaller device having two adjustable extension arms to accomplish the
[same purpose].” ICON Memo. in Supp., at 10 (Dkt. No. 22).
ANALYSIS
I.
STANDARDS OF REVIEW
A.
SUMMARY JUDGMENT
ICON asserts that Vectra has infringed its ‘061 Patent either by literal infringement or under
the doctrine of equivalents. “Infringement, whether literal or under the doctrine of equivalents, is
a question of fact.” EMD Millipore Corp. v. AllPure Techs., Inc., 768 F.3d 1196, 1200 01 (Fed. Cir.
2014) (quotations, citation, and alteration omitted). Summary judgment may be granted, however,
“where there exists no issue of material fact and the moving party is entitled to judgment as a matter
of law.” Stryker Corp. v. Zimmer, Inc., 782 F.3d 649, 657 (Fed. Cir. 2015) (citing Fed. R. Civ. P.
56(c)) (quotations and other citations omitted). Likewise, “a court may determine infringement on
2
Free Motion® is “ICON’s primary commercial brand.” ICON Memo. in Supp., at 10 (Dkt.
No. 22). Unless otherwise noted, page numbers for docketed items refer to the ecf number at the top
of the page.
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summary judgment when no reasonable jury could find that every limitation recited in the properly
construed claim either is or is not found in the accused device.” EMD Millipore Corp., 768 F.3d at
1201 (quotations and citation omitted).
B.
CLAIM CONSTRUCTION
The first step of an infringement analysis is claim construction. Alcohol Monitoring Sys. v.
Actsoft, Inc., 414 Fed. Appx. 294, 298 (Fed. Cir. 2011) (citation omitted). “The purpose of claim
construction is to ‘determine the meaning and scope of the patent claims asserted to be infringed.’”
02 Micro Int’l, Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008)
(quotations, citation, and alteration omitted). Disputes about the meaning and scope of a claim must
be resolved by the court, not the jury. See id.
“Although it is appropriate for a court to consider the accused device when determining what
aspect of the claim should be construed,” claims are construed in “light of the claim language [and]
not in light of the accused device.” Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1367
(Fed. Cir. 2008) (quotations and citations omitted) (emphasis in original). Claim construction
centers on the claim because “that is the language the patentee has chosen to particularly point out
and distinctly claim the subject matter which the patentee regards as his invention.” Source
Vagabound Sys. v. Hydrapak, Inc., 753 F.3d 1291, 1299 (Fed. Cir. 2014) (quotations, citations, and
alterations omitted). Claims, however, “are part of a fully integrated written instrument,” and
therefore “must be read in view of the specification.” Id. (quotations and citations omitted). The
prosecution history also may inform the court about proper construction of a claim, “including
resolving ambiguities.” World Class Tech. Corp. v. Ormco Corp., 769 F.3d 1120, 1123 (Fed. Cir.
2014) (citations omitted).
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In this case, Vectra’s accused product puts in dispute certain claim terms. ICON asserts
claims construction is not necessary. Vectra contends the terms may be understood only by
examining the specification and prosecution history of the patents. As discussed below, the court
agrees that construction of certain patent terms is necessary before it can determine infringement.
II.
EXTENSION ARM
A.
Construction
The parties dispute the meaning of “extension arm.” The relevant language states: “the first
end of the first extension arm further including a pulley.”3 ‘061 Patent, col. 8:5 7 (Dkt. No 29 2).
Vectra designed its product so that the pulley is located on the flange. Thus, the crux of the dispute
between the parties is whether the extension arm necessarily includes the flange.
ICON contends “extension arm” means, “Any appendage that extends from a main body.”
In contrast, Vectra contends the term means, “The elongated part of the overall device that extends
the cable in front of the device. It includes a first end which is pivotally coupled adjacent to the
resistance assembly at a pivot point, but does not contain the semicircular flange.” For the reasons
discussed below, the court concludes “extension arm” means “an appendage extending from the
main structure of the device, not including the semicircular flange.”
B.
Specification
Whether the extension arm includes the semicircular flange is not clear from the claim
language. Indeed, the word “flange” is never mentioned in Claim 1. When construing a patent,
3
The same or similar language is found in each independent claim of the ‘323 and ‘061
Patent. Although the court’s discussion focuses on the ‘061 Patent in this section, nothing in the
patents or the prosecution history indicates that “extension arm” is used differently in the two
patents.
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however, the word “comprising” means the apparatus includes at least each of the elements stated,
but it may contain additional parts as well and still fall within the scope of a claim. Free Motion
Fitness, Inc., 423 F.3d at 1347 (citation omitted). Here, the preamble of Claim 1 states it is claiming
“[a]n exercise apparatus, comprising . . . .” ‘061 Patent, col. 7:63 (Dkt. No. 29 2) (emphasis added).
Thus, Claim 1 may include a “flange” and still fall within the scope of the claim.
Although “flange” is not mentioned in Claim 1, it is discussed in the specification. First, it
states that “[t]he semicircular flange 78 is positioned substantially parallel to the plane on which the
first extension arm 12 rotates.” Id. at col. 4:28 29. This point is then expanded when the
specification states “[t]he semicircular flange assembly 178 includes a pair of opposed flat plates and
is mounted to lie within the plane in which the first extension arm 112 rotates.” Id. at col. 6:55 57.
The specification further states “[t]he first extension arm 112 is pivotally coupled, at a position near
the first end 160 of the extension arm 112, to a semicircular flange assembly.” Id. at col. 6:52 54.
These three parts of the specification support that the flange is a separate part of the invention that
has its own components and is coupled to the extension arm rather than being a part of the extension
arm.
Next the specification states:
The first extension arm 112 is pivotally coupled in a manner allowing
a user to select a desired orientation for the extension arm 112 and
lock the extension arm 112 in place. Specifically, the first extension
arm 112 includes a locking hole 170 located adjacent a pivot hole 172
through which a pivot pin 174 passes to pivotally couple the first
extension arm 112 to the semicircular flange assembly 178, and
ultimately, the weight stack 124. The locking hole 170 is aligned
with a series of flange holes 176 formed in the semicircular flange
assembly 178 of the weight stack 124.
Id. at col. 6:62 74 (emphasis added). Specifying that the extension arm is coupled to the
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semicircular flange by passing a pin through the hole on the extension arm and a separate hole on
the semicircular flange again supports that the flange is a separate component that is coupled to
rather than being a part of the extension arm. Moreover, the specification states the semicircular
flange assembly is on the weight stack, which again indicates the flange is not on the arm. The court
therefore concludes the specification is consistent with Vectra’s construction.
C.
Previous District Court Construction
ICON nevertheless contends that Vectra’s proposed construction is incorrect based on a prior
ruling by Judge Bruce S. Jenkins. In 2003, Judge Jenkins construed “the ‘extension arm’ to include
both the extension device and the casting4 which locks the extension arm in various positions.” Free
Motion Fitness, Inc. v. Cybex Int’l, Inc., 311 F. Supp. 2d 1297, 1304 (D. Utah 2003). He did so by
looking at the language of Claim 8. Claim 8 states:
The exercise apparatus of claim 1, wherein the first extension arm
includes a first locking means for selectively locking the first
extension arm in various positions relative to the weight stack . . . .
‘061 Patent, col. 8:54 57 (Dkt. No. 29-2) (emphasis added). Because the specification provides that
“the first extension arm 112 includes a locking hole 170 located adjacent a pivot hole 172 through
which a pivot point pin 174 passes to pivotally couple the first extension arm 112 to the semicircular
flange assembly and ultimately, the weight stack,” id. at col. 6:65 7:2, Judge Jenkins concluded the
casting is part of the locking means. And because Claim 8 states the locking means is part of the
extension arm, he further concluded the casting was part of the extension arm. Free Motion Fitness,
Inc., 311 F. Supp. 2d at 1304 & n.4 (citing ‘061 Patent, col. 6:65 7:9).
4
ICON equates the casting at issue in Free Motion to the flange at issue here. The court
assumes, without deciding, that ICON’s contention is correct.
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Claim 8 is a dependent claim. The Federal Circuit has recognized “that dependent claims
can aid in interpreting the scope of claims from which they depend.” North Am. Vaccine v. Am.
Cyanamid Co., 7 F.3d 1571, 1577 (Fed. Cir. 1993). This means if the flange is part of the locking
means, then Claim 8 would help inform the court whether the flange is also part of the extension
arm.
The specification does not disclose, however, that the locking means necessarily includes the
flange. Rather it states “[t]he locking hole is aligned with a series of flange holes formed “in the
semicircular flange assembly of the weight stack.” ‘061 Patent, col. 7:2 4 (emphasis added). This
strongly indicates the flange is separate from the locking means that is located on the extension arm.
In truth, the court finds it an odd construction to state everything that locks the extension arm into
place must be on the extension arm because it would mean the extension arm was locking itself into
place instead of locking the extension arm into place via another structure. See id. at col. 4:33 36
(stating a pin passes through the locking hole to the flange hole “to lock the extension arm at a desire
angular orientation relative to the weight stack”). Moreover, the other portions of the specification
discussed above are in disharmony with the construction that the flange necessarily is part of the
locking means on the extension arm. This court therefore does not adopt Judge Jenkins’ construction
of “extension arm.”
D.
Stare Decisis
Finally, ICON contends this court must construe “extension arm” as including the flange due
to stare decisis. After Judge Jenkins construed certain terms of the ‘061 Patent, the case was
appealed to the Federal Circuit. In the appellate decision, the Court stated the extension arm
encompasses the swivel assembly, which is referred to as the flange in this case. Free Motion
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Fitness, Inc., 423 F.3d at 1345. Notably, none of the parties challenged Judge Jenkins’ construction
of extension arm. Thus, when the Federal Circuit made that statement, it was in the background
section of its opinion, and it did so without analysis because the issue of how “extension arm” should
be construed was not before the Court.
The Federal Circuit has stated “[s]tare decisis applies only to legal issues that were actually
decided in a prior action.” Beacon Oil Co. v. O’Leary, 71 F.3d 391, 395 (Fed. Cir. 1995) (citations
omitted). Because the Court did not actually decide whether Judge Jenkins’ construction of
“extension arm” was correct, stare decisis does not apply here.
III.
Offset
A.
Construction
The parties also dispute the meaning of “offset,” as used in each of the independent claims
for the ‘323 and ‘061 Patents. The relevant language states: “a pulley having an axis of rotation
offset from the first pivot point.” ‘323 Patent, col. 8:13 14 (Dkt. No 29 5) (emphasis added). ICON
contends “offset” means, “structurally separate.” Vectra contends the term means, “offset from the
pivot point in such a position that the cable tension does not substantially vary as the extension arm
is rotated.” For the reasons discussed below, the court concludes “offset” means “structurally
separate.”
B.
Specification and Prosecution History
“Claim terms are generally given the meaning those terms would have to a person of ordinary
skill in the art.” Saunders Group, Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1331 (Fed. Cir. 2007)
(citation omitted). ICON argues it would be error to adopt Vectra’s construction because it is
contrary to the “plain and ordinary of meaning” of offset “to one of skill in the art.” Thorner v. Sony
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Computer Entm’t Am LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012) (citation omitted). Vectra
disagrees based on the prosecution history of the ‘323 Patent. Because the ‘061 Patent is a
continuation patent and the specifications for both Patents are almost identical, the prosecution
history of the ‘323 Patent is relevant in construing the term in both patents. Ormco Corp. v. Align
Tech., Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007). When the ‘323 Patent application was filed on
September 14, 1999, the claims did not mention offset, pulleys, pivots, or cable tension. Indeed, the
term “offset” is found nowhere in the initial patent application. Because it is not in the specification
nor any of the initial claims, the prosecution history is important to understand how the term came
to be inserted in the ‘323 Patent.
After the United States Patent and Trademark Office (“PTO”) rejected the first iteration of
the patent claims as being anticipated by prior art, ‘323 Prosecution History, at 42, 51 (Dkt. No. 824), the inventor5 amended the independent claims to add further elements. He also added the
following dependent claim:6
The exerciser apparatus according to claim 1 wherein the first end of
the first extension arm is pivotally supported adjacent the resistance
assembly at a first pivot point and includes a pulley having an axis of
rotation offset from the first pivot point such that cable tension does
not vary as the first extension arm is selectively rotated . . . .
Id. at 58 (emphasis added). This was the first time the terms “offset” and “cable tension” appeared
in the claims. These new dependent claims were consistent with the following language of the
specification:
In an attempt to reduce the tightening or loosening of the cable 128
5
The inventor is Roy Simonson. ICON later acquired the Patents.
6
The inventor added the same dependent claim to each of the independent claims.
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as the first extension arm 112 is rotated, the first guide pulley is
positioned to ensure that the cable tension does not vary as the
extension arm is rotated. Specifically, and with reference to FIG. 9,
the first guide pulley 184 is positioned to ensure that A:D A:F A:H.
‘323 Patent, col. 7:26 31 (Dkt. No. 29-5). Although the language does not mention “offset”
expressly, it does discuss positioning the guide pulley so that the cable tension does not vary.
The inventor stated the new “claims further define[d] the invention,” and stood in contrast
to prior art (Konoplyanko) that “disclose[d] an assembly wherein the pulley 8 rotates directly about
the axis of rotation 4” rather than being offset from it. ‘323 Prosecution History, at 63 (Dkt. No. 824). Additional discussion explained it was important to offset the pulley from the pivot point so as
to maintain constant cable tension. Ultimately, the inventor amended each of the independent claims
to state the following:
the first end of the first extension arm includes a pulley having an
axis of rotation offset from the first pivot point and rotating about an
axis substantially parallel to the first axis such that cable tension does
not vary as the first extension arm is selectively rotated . . . .
‘323 Patent, col. 8:13 16 (Dkt. No. 29-5).
When claims are construed, the court must “give effect to all of their terms.” Fifth
Generation Comput. Corp. v. IBM, 416 Fed. Appx. 74, 79 (Fed. Cir. 2011) (citation omitted). If the
court were to construe “offset” to mean “offset from the pivot point in such a position that the cable
tension does not substantially vary as the extension arm is rotated,” it would be using the claim term
to define itself. Additionally, because the independent claims of the ‘323 Patent expressly
incorporate the limitation that “cable tension does not vary,” it would render that language
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superfluous if offset were defined by that same limitation.7 Thus, the court concludes “offset” should
be defined simply as “structurally separate.”
IV.
CABLE TENSION DOES NOT VARY
The parties also dispute the meaning of “cable tension does not vary,” but did not formally
ask for construction of it. They nevertheless have provided briefing on the issue. The Federal
Circuit has stated:
District courts have wide latitude in how they conduct the
proceedings before them, and there is nothing unique about claim
construction that requires the court to proceed according to any
particular protocol. As long as the trial court construes the claims to
the extent necessary to determine whether the accused device
infringes, the court may approach the task in any way that it deems
best.
Ballard Med. Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir. 2001). The
court concludes that construction of the term is necessary to resolve this matter and briefing is
sufficient to inform the court about the parties’ respective positions on the term.
A.
Construction
ICON argues that “cable tension” means load. Once a weight overcomes gravity, the load
remains constant. Thus, according to ICON, cable tension always remains constant regardless of
whether a pulley is offset or parallel to the axes of rotation. ICON Opp’n Memo., at 21 22 (Dkt. No.
103). ICON further argues the attorney who prosecuted the patent failed to realize this and therefore
inserted a term that “does not really narrow the claim because it is always satisfied.” Id. at 22.
7
Although the ‘061 Patent does not expressly incorporate the “cable tension” limitation, as
discussed below, it is still applicable to the ‘061 Patent. Thus, the court concludes the superfluity
analysis applies to both patents.
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In contrast, Vectra contends that “cable tension” means length and that the wrong term was
used in the patents. Vectra Reply Memo., at 11 (Dkt. No. 111). It cites to the portion of
specification that states:
In an attempt to reduce the tightening or loosening of the cable 128
as the first extension arm 112 is rotated, the first guide pulley is
positioned to ensure that the cable tension does not vary as the
extension arm is rotated. Specifically, and with reference to FIG. 9,
the first guide pulley 184 is positioned to ensure that A:D A:F A:H.
‘323 Patent, col. 7:21 26 (Dkt. No. 29-5). With respect to the last sentence, ICON states,
“[a]dmittedly, [it] suggests an incorrect supposition of some correlation between constant segment
lengths and constant tension,” but argues the “mistake does not amount to a redefinition of “tension.”
ICON Opp’n Memo., at 23 (Dkt. No. 103). Thus, when proffering their respective constructions,
both parties contend some error was made in the patent.
“Tension” has several meanings. It can mean load or weight. It can also be expressed in
terms of stress on an object when it is elongated or lengthened. Because the meaning of the term is
not apparent, the prosecution history is again important to its construction.
B.
Specification and Prosecution History of the ‘323 Patent
In the background of the invention, the inventor notes the following problem with prior art:
Weight stack based exercise apparatuses . . . encounter problems as
a result of the momentum created when the weight plates are lifted
under the control of a cable. Specifically, when the weight plates are
lifted upwardly at a fast pace, the generated momentum creates
momentary reductions and increases in the perceived force
encountered by the user of the exercise apparatus. Such momentary
changes are highly undesirable.
‘323 Patent, col. 1:42 49 (Dkt. No. 29-5) (emphasis added). As a result, one object of the invention
was to include “a series of pulleys which create a 4:1 load ratio.” Id. at col. 2:12 14. This would
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help “reduce[] the inertia of the weight plates.” Id. at col. 3:12. Although the 4:1 load ratio and
weight plate inertia are separate from the issues presently before the court, this background supports
that changes in force were a concern.
The concern carried through when the inventor amended the application by adding:
the first extension arm . . . includes a pulley having an axis of rotation
offset from the first pivot point such that cable tension does not vary
as the first extension arm is selectively rotated . . . .
‘323 Prosecution History, at 58 (Dkt. No. 82-4) (emphasis added). Precluding variance in the cable
tension is another way to express controlling forces or stress that negatively impact how the
apparatus functions. Indeed, after the inventor distinguished Konoplyanko, he further asserted it
would not have been obvious to modify Konoplyanko in light of Webber because
If the pulley 8 [in Konoplyanko] were to be offset from the axis of
rotation 4 to meet the outstanding claims, the cable 9 would become
oriented at an undesirable angular orientation, creating forces oblique
to the axis of rotation for the pulley 8. Such forces are highly
undesirable and would destroy the apparatus disclosed by
Konoplyanko.
Id. (emphasis added). In other words, the inventor distinguished Konoplyanko because the pulley
was not offset and even if it were offset in the same manner as the pulley in Webber, cable tension
would vary to such a degree as to destroy the Konoplyanko apparatus. If “cable tension” means load
rather than force, and load always remains constant as ICON contends, Konoplyanko’s apparatus
would not have been destroyed by undesirable forces regardless of whether the pulley was offset.
Thus, force remained at issue even after the weight plates were in motion.
In the inventor’s final iteration, he incorporated the limitations of “offset” and “cable tension”
into each of the independent claims. He then reiterated that “movement provided by the cables
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passing over these pulleys is considered to be undesirable as the tension thereon will vary as the
position of the extended arms is adjusted.” Id. (emphasis added). In other words, the angular
position of the arm created changes in how the cable moved over the pulley thereby altering the
force or stress on the cable in Konoplyanko’s invention. Because each independent claim in the ‘323
Patent differed from Konoplyanko in that respect, the inventor argued that prior art was irrelevant.
Id. at 78 79.
With respect to the Fitzpatrick invention that had an offset pulley, the inventor stated the
pulley’s axis of rotation was transverse to the axis of rotation of the arm. Id. at 79. Therefore:
The undesirable forces created by the transverse orientation of the
pulley 38 disclosed by Fitzpatrick is in direct contrast with the
claimed invention where the axes of the respective pulleys are . . .
substantially parallel to the axes of rotation of the extension arms.
The claimed assembly provides for virtually no variation in cable
tension when the extension arms are selectively rotated.
Id. (emphasis added). Hence, when distinguishing Konoplyanko and Fitzpatrick, the inventor
focused on the undesirable tension or forces that were created if the pulley was not offset and
parallel. The positioning of the pulley and pivot point overcame the tension problem to such a
degree that there was “virtually no variation in cable tension.”
The amendments and argument further inform the court about the meaning of the portion of
the specification that states:
In an attempt to reduce the tightening or loosening of the cable 128
as the first extension arm 112 is rotated, the first guide pulley is
positioned to ensure that the cable tension does not vary as the
extension arm is rotated. Specifically, and with reference to FIG. 9,
the first guide pulley 184 is positioned to ensure that A:D A:F A:H.
‘323 Patent, col. 7:21 26 (Dkt. No. 29-5). Again, if cable tension were to mean load and the load
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is always constant, there would be no tightening or loosening of the cable based on load variance.
Yet, if the specification were to mean length, Figure 9 itself does not appear to hold length constant.
On the other hand, if tension refers to force or stress, then it follows that cable tension can loosen
(derail) or tighten (bind) if the pulley is in an undesirable position relative to the pivot point.
Moreover, by holding the force constant so as to preclude tightening or loosening, then the desire
for “A:D A:F A:H” could be met. The court therefore concludes that “cable tension does not vary”
means “holding the force or stress constant as applied to the cable so as to preclude loosening or
tightening of the cable.”
V.
SCOPE OF THE ‘061 PATENT
The Federal Circuit “presume[s], unless otherwise compelled, that the same claim term in
the same patent or related patents carries the same construed meaning.” Aventis Pharms., Inc. v.
Amino Chems. Ltd., 715 F.3d 1363, 1380 (Fed. Cir. 2013). The ‘323 and ‘061 Patents both contain
the limitations of “extension arm” and “offset.” Nothing in the prosecution history indicates the
terms used in the ‘323 Patent were intended to have a different meaning in the ‘061 Patent.
Accordingly, the court’s construction of those two terms apply to claims at issue in both Patents.
ICON argues, however, that the cable tension requirement “has no application to the ‘061 patent
because that language is conspicuously absent from the patent’s independent claims.” ICON Opp’n
Memo, at 20 (Dkt. No. 103) (emphasis in original). Vectra argues the term applies based on
prosecution disclaimer. For the reasons discussed below, the court concludes the limitation is
implicit in Claim 1 of the ‘061 Patent.
B.
Disclaimer in a Parent Patent
“Prosecution disclaimer occurs when a patentee, either through argument or amendment,
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surrenders claim scope during the course of prosecution. Amendments or arguments that are merely
vague, ambiguous, or subject to other reasonable interpretation are not sufficient to surrender claim
scope.” Heuft Systemtechnik GmbH v. Indus. Dynamics Co., Ltd., 282 Fed. Appx. 836, 839 (Fed.
Cir. 2008) (citing Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir.
2007)). Instead, “for prosecution disclaimer to attach, the patentee’s actions must be ‘clear and
unmistakable.’” Id. (quoting Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir.
2003)).
In Heuft, the Court addressed “equipment used in bottling plants” and whether the patentee
had disclaimed “exit angles less than 30 degrees.” Heuft Systemtechnik GmbH, 282 Fed. Appx. at
837, 839 (alteration omitted). When Heuft prosecuted the ancestor patent, “no independent claim
contained a limitation relating to the exit angle of the railings.” Id. at 839. After the examiner
rejected all of the claims, Heuft “amended the independent claims to expressly recite an exit angle
of 30 degrees to 100 degrees.” Id. at 840 (alteration omitted). Ultimately, the examiner allowed the
claims. The Court stated it had “little difficulty concluding that Heuft clearly and unmistakably
disclaimed exit angles less than 30 degrees.” Id. at 841 (alteration omitted).
Similarly, when the ‘323 Patent was prosecuted, none of the independent claims contained
a limitation relating to offset, parallel pulleys, or cable tension. Only after rejection of all of the
claims, including the inventor’s attempt to make the “offset” and “cable tension” limitations merely
part of a dependent claim, did the inventor amend each of the independent claims to include the
express limitations.
When the Federal Circuit previously analyzed the two Patents, it commented without
deciding, that a disclaimer may have applied to the “claimed assembly.” Free Motion Fitness, Inc.
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v. Cybex International, Inc., 423 F.3d 1343, 1352 (Fed. Cir. 2005). The “claimed assembly” phrase
was used during prosecution to distinguish Fitzgerald. ‘323 Prosecution History, at 79 (Dkt. No. 824). The entire focus of the prosecution, however, pertained to how the guide pulley functioned
relative to other prior art. It had to be offset from the pivot point and be without cable tension
variance to distinguish it from Konoplyanko. It further had to have an axis of rotation parallel to the
first axis of rotation to distinguish it from Fitzgerald. Each of those elements working together were
the claimed assembly, which was incorporated into every independent claim of the ‘323 Patent to
obtain the patent. The court therefore concludes the inventor did disclaim the scope of his invention.
Specifically, he disclaimed any position of the pulley that (1) is not offset from the pivot point, (2)
with a parallel axes of rotation, (3) such that the cable tension does not vary.
C.
Application of a Disclaimer to a Continuation Patent
i.
Same Claim Terms
ICON contends even if there was a disclaimer, the “cable tension” limitation still was not
incorporated into the ‘061 Patent. A continuation patent may have “broader claims than were
allowed in the parent.” Hakim v. Cannon Group, PLC, 479 F.3d 1313, 1317 (Fed. Cir. 2007)
(citation omitted). Moreover, absent “clear evidence to the contrary,” a presumption exists that a
patent “examiner [has] assured himself of the patentability of new claims.” Id. (citation omitted).
This means that a disclaimer in the parent patent does not automatically extend to a continuation
patent. Indeed, “a prosecution disclaimer will only apply to a subsequent patent if that patent
contains the same claim limitation as its predecessor.” Regents of the Univ. of Minn. v. AGA Med.
Corp., 717 F.3d 929, 943 (Fed. Cir. 2013) (citation omitted). “[W]hen the purported disclaimers
made during prosecution are directed to specific claim terms that have been omitted or materially
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altered in subsequent applications . . . those disclaimers do not apply.” Id. (quotations, citation, and
alterations omitted). Thus, “the proper inquiry is whether the scope of the claim limitation is
substantially the same in the subsequent application as it was in the earlier application.” Id. at 944
(citation omitted).
In this case, when the inventor filed the continuation application, he incorporated the offset
and parallel axes of rotation elements. But he omitted the cable tension limitation. ICON therefore
contends the limitation cannot apply due to its omission. The court disagrees. The cable tension
limitation is not the phrase that was narrowed by a disclaimer. It is the disclaimer. The inventor
inserted the disclaimer during prosecution of the ‘323 Patent to narrow the offset and parallel axes
of rotation elements. It was not enough that the pulley be structurally separate from the pivot point
or that it have a parallel axis of rotation. The inventor required the offset and parallel axes to be such
that the cable tension did not vary. Any other position of the guide pulley that did not accomplish
this purpose was disclaimed. Thus, the specific claim terms to which the disclaimer attached were
offset and parallel axes of rotation. When the inventor then used the same claim terms (namely,
offset and parallel axes of rotation) in the ‘061 Patent, the disclaimer still attached to those terms
even though the inventor did not expressly include the particular disclaimer language.
ii.
Rescission
Once an applicant narrows a claim term by disclaimer, the “applicant cannot recapture claim
scope that was surrendered or disclaimed.” Hakim, 479 F.3d at 1317. An exception exists, however,
if the disclaimer is rescinded. To rescind, “the prosecution history must be sufficiently clear to
inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may
need to be re-visited.” Id. at 1318 (citation omitted).
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Hakim is informative about whether ICON rescinded the disclaimer during prosecution of
the ‘061 Patent. In Hakim, the Federal Circuit addressed whether the hole in a flexible valve could
be any type of opening or whether it had to be a slit. Id. at 1315 16. It found that the opening had
to be a slit due to prosecution disclaimer. After Hakim received a notice of allowance, he filed a
continuation application wherein two claims merely referred to an “opening” rather than a slit. Id.
at 1316. The attorney letter accompanying the application informed the examiner that Hakim was
broadening the claims by changing “slit” to “opening.” Id. The examiner allowed the claims
“without any comment or rejection.” Id. The trial court concluded the letter was insufficient to
rescind Hakim’s disclaimer, and the Federal Circuit affirmed. Id. at 1316 17.
Here, after the inventor received a Notice of Allowance for the ‘323 Patent, the inventor filed
the ‘061 continuation patent application. With respect to the first extension arm, Claim 1 required
that the pulley be offset such that the cable tension did not vary. ‘061 Prosecution History, at 23
(Dkt. No. 82-3). The “cable tension” limitation was omitted, however, with respect to the second
extension arm. Id. Six days later, before the PTO had taken any action on the continuation
application, the inventor seemingly “corrected” his application by also deleting the “cable tension”
phrase with respect to the first extension arm. Id. at 47. But for the omission of the “cable tension”
phrase, Claim 1 of the continuation application was identical to Claim 20 of the ‘323 Patent. ‘061
Prosecution History, at 23, 47 (Dkt. No. 82-3). The PTO rejected the claim based on double
patenting, but it cited to Claim 15 of the ‘323 Patent as being “not patentably distinct.” Id. at 57.
The inventor then filed a terminal disclaimer and corrected some typographical errors to overcome
the rejection. Id. at 86. After doing so, the PTO allowed the claim without further discussion. Id.
at 96.
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The prosecution history of the ‘061 is even less specific than that in Hakim for there was no
attorney letter informing the PTO that the inventor was broadening the claims. Even the “correction”
that deleted the cable tension disclaimer was insufficient to alert the examiner that the prior art may
need to be re-visited. The court therefore concludes the inventor did not rescind the disclaimer.
II.
LITERAL INFRINGEMENT
After a court construes the claims, the second part of an infringement analysis is to “apply
the properly construed claims to the accused device.” Alcohol Monitoring Sys., 414 Fed. Appx. at
298 (citation omitted). ICON moves for summary judgment that Vectra has literally infringed Claim
1 of the ‘061 Patent. In turn, Vectra moves for summary judgment that it has neither infringed the
‘323 Patent nor the ‘061 Patent.
Literal infringement requires an accused devise to read on every element of a particular
claim. If even one element is missing, there is no literal infringement. See Builders Concrete v.
Bremerton Concrete Prods. Co., 757 F.2d 255, 257 (Fed. Cir. 1985) (stating “[l]iteral infringement
requires that the accused device embody every element of the claim”). Vectra has provided evidence
that the cable length on its product varies by as much as 4 inches when the extension arm is
selectively rotated. It is unclear, however, whether the cable tightens or loosens due to variance in
the force or stress placed on it as the arm is rotated. Neither party has provided sufficient evidence
for the court to determine that point. Accordingly, on the present record, that issue remains open.
A separate element, however, is dispositive on the issue of literal infringement.
The specific language at issue in Claim 1 states “the first end of the first extension arm
further including a pulley.” Id. at col. 8:5 7 (emphasis added). This limitation is found in each of
the independent claims of both patents. The word “including” means “the listed elements . . . are
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essential.” Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1214 (Fed. Cir. 2008). Thus,
Vectra’s product must have an extension arm that contains a pulley for this element to be met.
Because the pulley on Vectra’s product is located on the flange, and the court has concluded the
flange is not part of the extension arm, Vectra’s product does not meet this element. Accordingly,
Vectra’s product does not literally infringe either patent.
III.
DOCTRINE OF EQUIVALENTS
A.
Standard
ICON asserts that even if Vectra has not literally infringed Claim 1 of the ‘061 Patent, it
nevertheless has done so under the doctrine of equivalents. “[A] patentee may establish infringement
under the doctrine of equivalents if an element of the accused device performs substantially the same
function in substantially the same way to obtain the same result as the claim limitation.” EMD
Millipore Corp., 768 F.3d at 1202 (quotations and citation omitted). “Equivalency may also be
proven where the differences between the invention as claimed and the accused product . . . are
insubstantial.” Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1297 (Fed. Cir. 2009) (citation omitted).
The equivalents analysis “proceeds element-by-element.” Id. at 1296. “[A] generalized showing
of equivalency between the claim as a whole and the allegedly infringing product . . . is not sufficient
to show infringement.” Id. (citation omitted). Moreover, the doctrine cannot be used to ignore or
vitiate “individual claim elements.” Id. at 1297 (citation omitted).
Determining whether a product simply performs substantially the same function, in
substantially the same way, to obtain the same result as the claim limitation versus vitiating a claim
element is not always obvious. The Supreme Court has cited with approval the following guideline
to help with this determination:
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A distinction can be drawn that is not too esoteric between
substitution of an equivalent for a component in an invention and
enlarging the metes and bounds of the invention beyond what is
claimed.
....
[C]ourts have no right to enlarge a patent beyond the scope of its
claims as allowed by the Patent Office. The “scope” is not enlarged
if courts do not go beyond the substitution of equivalent elements.
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997) (quoting Hilton Davis
Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1573 74 (Nies, J., dissenting) (emphasis in
original) (alterations omitted). The court further explained:
What constitutes equivalency must be determined against the context
of the patent, the prior art, and the particular circumstances of the
case. Equivalence, in the patent law, is not the prisoner of a formula
and is not an absolute to be considered in a vacuum. . . .
Consideration must be given to the purpose for which an [element] is
used in a patent, the qualities it has when combined with the other
[elements], and the function which it is intended to perform. An
important factor is whether persons reasonably skilled in the art
would have known of the interchangeability of an ingredient not
contained in the patent with one that was.
Id. at 24 25 (quoting and declining to overrule Graver Tank & Mfg. Co. v. Linde Air Products Co.,
339 U.S. 605, 612 (1950) on these points of consideration). Finally, it is an issue of fact whether an
accused element is equivalent to a claimed element, but it is a matter of law whether a claimed
element would be vitiated by applying the doctrine of equivalents. Id. at 38 39 & n.8.
B.
Application to Extension Arm
In this case, the issue is not whether Vectra’s flange and ICON’s extension arm are
equivalent. Instead, the issue is whether placing the pulley on the flange is equivalent to placing it
on the arm. As discussed above, the inventor distinguished prior art by offsetting the guide pulley
from the pivot point, with parallel axes of rotation, such that the cable tension did not vary. While
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location of the guide pulley was critical, it arguably was for reasons other than it being located on
the extension arm. ICON therefore may be able to argue that prosecution history estoppel does not
bar it from asserting it is equivalent to locate the pulley on the flange in Vectra’s product. WarnerJenkinson Co., 520 U.S. at 33. Additionally, the particular design of Vectra’s product raises the
question whether a person reasonably skilled in the art would have known of the interchangeability
of placing the pulley on the flange instead of the extension arm. Vectra argues they are not
interchangeable because the extension arm on Vectra’s product may be removed and its product will
still function while ICON’s would not. If anything, this supports the guide pulley’s location on
Vectra’s product is equivalent to the guide pulley location of ICON’s invention because it arguably
functions in the same manner. The court therefore concludes that material issues of fact exist about
whether the guide pulley on the accused product is equivalent to the claimed element. Accordingly,
the court denies Vectra’s motion for summary judgment.
CONCLUSION
For the reasons discussed above, the court DENIES ICON’s motion for partial summary
judgment (Dkt. No. 22) and GRANTS IN PART and DENIES IN PART Vectra’s summary
judgment motion (Dkt. No. 82). Specifically, the court grants Vectra’s motion on the issue of literal
infringement because the flange is not part of the extension arm, and thus, the extension arm on
Vectra’s product does not include a pulley. The court denies the motion on the issue of the doctrine
of equivalents because material issues of fact are in dispute. If ICON is able to prove locating the
guide pulley on the flange is equivalent to locating the guide pulley on the extension arm, it will then
have to prove that Vectra’s product meets the “cable tension does not vary” requirement to prevail
on its infringement claims. Conversely, if Vectra is able to show that its product does not meet the
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cable tension requirement, then it may prevail on its defense of non-infringement even if locating
the pulley on the flange is equivalent to locating the pulley on the extension arm.
DATED this 6th day of July, 2015.
BY THE COURT:
______________________________________
Clark Waddoups
United States District Judge
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