TC Development and Design Inc v. Discount Ramps.com LLC et al

Filing 133

MEMORANDUM Regarding Claim Construction. TELEPHONIC STATUS CONFERENCE is set for 7/1/13 at 3:30 PM before Judge Charles N Clevert Jr. The court will initiate the call. (cc: all counsel)((cef), C. N. Clevert, Jr.)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN

T.C. DEVELOPMENT AND DESIGN INC.,
d/b/a Condor Products,
Plaintiff,
v.

Case No. 07-C-0861

DISCOUNT RAMPS.COM LLC,
DISCOUNT RAMPS.COM TRAILER
& SPORTS DIVISION LLC,
JOEL LEDERHAUSE, AIMEE LEDERHAUSE,
RAMP CONNECTION LLC,
JARED NORTHEY, d/b/a Ramp Connection,
ROBERT JANESZ, and ERT CHOCKS, LLC.,
Defendants.

MEMORANDUM REGARDING CLAIM CONSTRUCTION
AND SETTING A TELEPHONIC STATUS CONFERENCE
Having reviewed the briefs on claim construction of the two patents-in-suit, U.S.
Patent No. RE42,971 (‘971) and U.S Pat. 6,575,310 (‘310), the court held a hearing
pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S. Ct. 1384, 134
L. Ed.2d 577 (1996) (hereinafter, “Markman II” ). During the hearing, the parties presented
proposed definitions for four terms: surface, entrance portion, pivot pin, and angled Vflange. However, by the conclusion of the proceeding the parties had agreed that pivot pin
with respect to the ‘971 patent should be defined as: a rod or pin that allows for the rotation
movement of the saddle. Now, therefore, the court has considered the parties' arguments
and construes the remaining three claims as set forth below.
At the outset it is noted that plaintiff proffers that the file histories of the patents-insuit include the original patents, as well as reexamination and reissue proceedings. The
prosecution began with the February 9, 2001, filing of the parent application,

SN 09/780,553. The Examiner issued a restriction requirement specifying two groups of
claims: (1) claims 1-21 drawn to a motorcycle lift, classified in class 254, subclass 10B; and
(2) claims 22-31, drawn to a motorcycle stand, classified in class 211, subclass 162.
Plaintiff prosecuted the second group in the original application, which was issued as the
‘310 patent.
With respect to the ‘310 patent, one office action issued on June 3, 2002, making
a § 112 rejection requiring wording changes and a § 102(b) rejection as anticipated by
Jones (U.S. Pat. No. 3,430,983). Plaintiff amended the independent claims to add the Vflange limitation of original claims 26 and 31 to the independent claims: the wheel stop
including an angled V-flange extending from the upper end thereof. The claims were
allowed and the ‘310 patent issued.
On May 21, 2009, Excel Equipment requested a reexamination. According to
plaintiff, the claims were amended to clarify that the invention includes an adjustable
pivoting saddle as shown in the claims that issued in the Re-examination Certificate. (Doc.
126, Ex. A.)
Next, an inter partes reexamination request was filed on behalf of Titan Marking LLC
on September 2, 2010. Plaintiff filed an appeal of the Examiner’s refusal of the claims.
On July 18, 2012, the Trademark Trial and Appeal Board reversed the Examiner’s Basis
for Rejection. (Doc. 126, Ex. B.) On December 4, 2012, the Trademark Trial and Appeal
Board denied Titan’s request for rehearing on its merits. The final reexamination certificate
has not yet issued.
The second patent-in-suit, the ‘971 can be traced to September 9, 2003, when the
plaintiff filed a continuation application of the divisional application of the parent case
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SN 09/780, 553, and was assigned SN 10/658,704. An office action issued on January 18,
2005, making a double patenting rejection over the ‘300 patent. Plaintiff filed a terminal
disclaimer on March 21, 2005. SN 10/658,704 issued as U.S. Pat. No. 6,935,619 (the ‘619
patent) on August 30, 2005. On March 17, 2009, plaintiff filed an application to reissue the
‘619 patent, and on May 21, 2009, Excel Equipment LLC filed an ex parte reexamination
request.
Plaintiff asserts that the claims were amended to clarify that the invention includes
an adjustable pivoting saddle as shown in the claims that issued in the re-examination
certificate U.S. Pat. No. 6,935,619 C1, issued on October 5, 2010. (Doc. 126, Ex. E.) The
reissue prosecution continued and resulted in the issuance of U.S. Pat. No. RE42,971 on
November 11, 2011.
LEGAL FRAMEWORK
The claim construction process “‘begins and ends in all cases with the actual words
of the claim.’” Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1324 (Fed. Cir.
2002) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed.
Cir. 1998). Claims terms "are generally given their ordinary and customary meaning."
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). 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 at the time of the invention.” Id., 415 F.3d at 1313.
A term's ordinary meaning is considered in the context of the intrinsic evidence,
including the claims, specification, and prosecution history. Id., 415 F.3d at 1314. Indeed,

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the Federal Circuit describes the patent specification as “the single best guide to the
meaning of a disputed term.” Vitronics, 90 F.3d at 1582. The patent specification may “act
[ ] as a dictionary when it expressly defines terms used in the claims or when it defines
terms by implication.” Id. (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 979
(Fed. Cir.1995)).
In addition to the claims and prosecution, the prosecution history provides another
source of intrinsic evidence. 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.”). This history contains the complete record of all proceedings
before the Patent and Trademark Office, including any express representations made by
the applicant regarding the scope of the claims.
Finally, where the intrinsic record is ambiguous, and when necessary, district courts
may rely on extrinsic evidence, which “consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony, dictionaries, and learned
treatises.” Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980). Aside from the
dictionary definitions, no extrinsic evidence was proffered for the purpose of defining the
remaining three terms.
CONSTRUCTION
I.

SURFACE
‘971 Patent
1.

A motorcycle stand for securing a motorcycle in an upright orientation, the
motorcycle having a front wheel, the stand comprising: a frame defining a
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wheel-way along a generally longitudinal path on the frame, the wheel-way
defining a surface; and a front wheel locking assembly, the front wheel
locking assembly including a pivoting saddle adjustably mounted to the
frame along the wheel-way, the saddle having a concave shape and
including an entrance portion lying along the wheel-way for receiving the
front wheel of the motorcycle and pivoting between an entry position wherein
the entrance portion lies on the surface and a locking position where the
entrance portion is raised from the surface when the front wheel passes over
and beyond a pivot pin ....
6.

A motorcycle stand for securing a motorcycle in an upright orientation, the
motorcycle having at least one of a front wheel and a rear wheel, the stand
comprising; a frame; and a wheel locking assembly, the wheel locking
assembly configured to receive the front wheel or the rear wheel from a
surface on which the motorcycle is resting, the wheel locking assembly
including a pivoting saddle adjustably mounted to the frame, the saddle
having a concave shape and including an entrance portion lying substantially
on the surface for receiving the wheel of the motorcycle and a rear portion
opposite the entrance portion, the saddle configured for pivoting between an
entry position wherein the entrance portion lies on the surface and a locking
position where the entrance portion is raised from the surface ....

‘310 Patent
1.

A motorcycle stand for securing a motorcycle in an upright orientation, the
motorcycle having a front wheel, the stand comprising: a frame defining a
wheel-way along a generally longitudinal path on the frame, the wheel-way
defining a surface; and a front wheel locking assembly, the front wheel
locking assembly including a pivoting saddle adjustably mounted to the
frame along the wheel-way so that the pivoting saddle is movable along the
wheel-way generally longitudinal path on the frame, the saddle having a
concave shape and including an entrance portion lying along the wheel-way
for receiving the front wheel of the motorcycle and pivoting between an entry
position wherein the entrance portion lies on the surface and a locking
position where the entrance portion is raised from the surface when the front
wheel passes over and beyond a pivot ....

5.

A motorcycle stand for securing a motorcycle in an upright orientation, the
motorcycle having at least one of a front wheel and a rear wheel, the stand
comprising: a frame; and a wheel locking assembly, the wheel locking
assembly configured to receive the front wheel or the rear wheel from a
surface on which the motorcycle is resting, the wheel locking assembly
including a pivoting saddle adjustably mounted to the frame so that the
pivoting saddle is movable along a generally longitudinal path on the frame,
the saddle having a concave shape and including an entrance portion lying
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substantially on the surface for receiving the wheel of the motorcycle and a
rear portion opposite the entrance portion, the saddle configured for pivoting
between an entry position where the entrance portion lies on the surface and
a locking position where the entrance portion is raised from the surface ....
For purposes of claim construction, the parties agree that surface is generally
defined as “the outer face, outside, or exterior boundary of a thing; outermost or uppermost
layer of area.” Http://dictionary.reference.com/browse/surface?s=t. Indeed, they concur
that the appropriate definition should include “the uppermost layer of the frame.” However,
defendants submit that the definition should end there. Plaintiff, in contrast, would add the
following language: “being a location in space having length and breadth but no thickness
and not necessarily having a solid structure.” As explained by the plaintiff, the real issue
is whether the surface must “be a physical solid structure, or can be simply a location in
space.”
The specification for both patents are identical and are written for a full two wheel
motorcycle lift designed to raise a motorcycle from the floor or ground. The patents-in-suit
cover the front wheel portion of the lift which can be used as a wheel chock. Citing Fig. 1,
plaintiff asserts that the front portion of the surface extends between the ramp for entry
onto the lift and cradle for holding the front wheel of the motorcycle but does not extend
to the other physical surface shown by the front wheel stand. Moreover, plaintiff cites Fig.
4C as showing that the surface is a horizontal plane but need not be a solid structure.
The court agrees with defendants that the surface is not limited to the generally
square-shaped middle portion but may extend forward and rearward to include the
longitudinally-shaped portions of the frame where the front and rear wheels rest. Nothing
in the specification or otherwise supports a definition finding that the surface arbitrarily or
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abruptly ends beyond the space in the middle of lift. Further, defining surface having no
thickness and “not necessarily” a solid structure is nebulous. Rather, the surface is simply
“the uppermost layer of the frame.”
II.

ENTRANCE PORTION
‘971 Patent
1.

the saddle having a concave shape and including an entrance portion
lying along the wheel-way for receiving the front wheel of the
motorcycle and pivoting between an entry position wherein the
entrance portion lies on te surface and a locking position wherein the
entrance portion is raised from the surface when the front wheel
passes over and beyond a pivot pin ....

6.

the saddle having a concave shape and including an entrance portion
lying substantially on the surface for receiving the wheel of the
motorcycle and a rear portion opposite the entrance portion, the
saddle configured for pivoting between an entry position wherein the
entrance portion lies on the surface and a locking position wherein the
entrance portion is raised from the surface, the saddle further
including a pivot between the entrance portion and the rear portion ....

‘310 patent
1.

the saddle having a concave shape and including an entrance portion
lying along the wheel-way for receiving the front wheel of the
motorcycle and pivoting between an entry position wherein the
entrance portion lies on the surface and a locking position wherein the
entrance portion is raised from the surface when the front wheel
passes over and beyond the pivot ....

5.

the saddle having a concave shape and including an entrance portion
lying substantially on the surface for receiving the wheel of the
motorcycle and a rear portion opposite the entrance portion, the
saddle configured for pivoting between an entry position wherein the
entrance portion lies on the surface and a locking position wherein the
entrance portion is raised from the surface.

The parties are in agreement that the entrance portion is found at the end of the
concave saddle where the wheel first comes into contact when a motorcycle is rolled onto
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the stand. The major point of contention is whether there is length to the entrance portion
of the saddle. Plaintiff proposes that the entrance portion be defined as “the portion fo the
saddle where the wheel of a motorcycle first contacts the saddle,” whereas the defendants
define entrance portion as “a length of the saddle at the end of the saddle that is first
contact by wheel when a motorcycle is placed in the stand.” Under the defendants’
definition, there must be some unspecified length so that the entrance portion lies along
the wheel-way or lies on the surface. Plaintiff, in contrast, maintains that the “portion” can
be defined as “a part of any whole, either separated from or integrated with it” or “a part of
a whole; fraction.” Http://dictionary.reference.com/browse/portion?s=t.
The court reads no requirement that the entrance portion be a particular length. By
its very nature, a portion can be any part of the whole and the term “portion” is used in the
specification and the claims. Accordingly, the court defines entrance portion as “a part or
fraction of the saddle that is first contacted by a wheel when a motorcycle is placed in the
stand.” This is consistent with the saddle “including an entrance portion lying along the
wheel-way for the receiving the front wheel of the motorcycle” and “an entrance portion
lying substantially on the surface for receiving the wheel of the motorcycle.”
ANGLED V-FLANGE
‘310 Patent
1.

the front wheel locking assembly further including a wheel stop for engaging
the front wheel when the motorcycle is moved onto the stand and when the
front wheel is positioned in the pivoting saddle, the wheel stop including an
angled V-flange extending from an upper end thereof.

5.

the wheel locking assembly further including a wheel stop at about the rear
portion for engaging and securing the wheel when the motorcycle is moved
onto the stand and when the wheel is positioned in the saddle beyond the
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pivot such that the saddle pivots to the locking position, the wheel stop
including an angled V-flange extending from an upper end thereof.
Plaintiff has proposed a definition of the angled V-flange as a “generally V-shaped
member.” Defendants add to this definition that it must be a separate or distinct portion
of the wheel stop or extend beyond the sides of the wheel stop. In support, defendants cite
the preferred embodiment, which explains the “wheel stop can be configured as an
upwardly extending, bent channel-shaped member for engaging the front wheel. An
angled V-flange can be mounted to an upper end of the wheel stop, for capturing the wheel
as it is moved into the stop.” (‘310 Pat., Col. 3, lines 5-9).
Nevertheless, the preferred embodiment does not require that the V-flange be
distinct from or project outward from the sides of the wheel stop. Rather, the angled
flange, configured as a generally V- shaped member may be fully integrated into the wheel
stop. The full claim term located in the reexamination certificate at column 2, lines 4-5, 3435 appears as “the wheel stop including an angled V-flange extending from an upper end
thereof. The use of the word “including” suggests that the wheel stop may have a V-flange
that exists as part of the wheel stop but not separate from the wheel stop. Accordingly, the
court defines an angled V-flange as a “generally V-shaped member.”
A telephonic status conference is set for Monday, July 1, 2013, at 3:30 p.m. The
court will initiate the call.
Dated at Milwaukee, Wisconsin, this 14th day of June, 2013.
BY THE COURT
/s/ C.N. Clevert, Jr.
C.N. CLEVERT, JR.
U.S. DISTRICT JUDGE
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