Metso Minerals Industries Inc et al v. Astec Industries Inc et al
Filing
49
DECISION AND ORDER signed by Judge Lynn Adelman on 11/28/11 denying 22 Motion for Summary Judgment; granting 48 Motion to File Sur-reply. (cc: all counsel) (dm)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
METSO MINERALS INDUSTRIES, INC.
and METSO MINERALS (FRANCE) S.A.,
Plaintiffs,
v.
Case No. 10-C-0951
JOHNSON CRUSHERS INTERNATIONAL, INC.
and ASTEC INDUSTRIES, INC.,
Defendants.
DECISION AND ORDER
John Crushers International, Inc. and Astec Industries, Inc. (together, “JCI”) claim
that Metso Minerals Industries, Inc. and Metso Minerals (France) S.A. (together “Metso”)
have infringed U.S. Patent No. 6,032,886 (the “’886 patent”). The present opinion contains
my claim construction. I also address Metso’s motion for summary judgment of noninfringement and invalidity.
I. BACKGROUND
The invention relates to cone-type rock crushers, which are devices used to crush
large-sized rock (such as from a quarry) into small-sized rock (for use in things like road
beds). In a typical crushing operation, large rocks are dumped into a hopper at the top of
the crusher. Gravity causes the rocks to drop into an area of the crusher that is between
a cone and a cone-shaped bowl. The bowl is above the cone, and the bowl and the cone
form a convex-concave relationship. The cone gyrates beneath the stationary bowl, and
thus large rocks in the space between the cone and the bowl are crushed between the
surfaces of the cone and the bowl. The smaller rocks then drop out of the bottom of the
crusher. To better visualize this process, it would help to watch the animation of a rockcrushing operation that JCI submitted at the Markman hearing.1 The figure below is a
screenshot from that animation.
Because the operator of a rock crusher will want to make small rocks of different
sizes (one inch, an inch-and-a-half, etc.) depending on the job, it is important to be able
to adjust the spacing between the bowl and the cone. The spacing is usually adjusted by
vertically moving the bowl closer to or farther away from the cone. Smaller rocks are
produced by moving the bowl closer to the cone. Larger rocks are produced by moving the
bowl farther away from the cone.
In the types of rock crushers at issue in the present case, the bowl is moved by
screwing it up or down, as follows: Although the crushing surface of the bowl is bowl1
For those without access to the record, I note that as of the date of this opinion, a
video similar to the one submitted by JCI was available on YouTube. See
http://www.youtube.com/watch?v=EgBedKPTIq8. The first fifty seconds of this video depict
the general process.
2
shaped, the “outside” of the bowl is a cylinder. The surface of the cylinder is covered with
screw threads, and these threads are mated to screw threads on the surface of a ringshaped bowl support.2 The bowl support is part of the frame of the rock crusher and does
not move. To move the bowl, the bowl is either screwed into the ring-shaped bowl support
or unscrewed out of the support. One can envision the bowl as the threaded part of a
screw and the bowl support as a nut. Screwing the bowl into the bowl support causes the
bowl to move downward and closer to the cone. Unscrewing the bowl out of the bowl
support causes the bowl to move upward and away from the cone.
Although an operator will want to be able to move the bowl closer to or farther away
from the cone between crushing operations, during a crushing operation the operator will
want the bowl to remain stationary. This is because if the bowl moves up or down during
the operation, the size of the rock will be inconsistent. Thus, the crusher must be equipped
with a mechanism that “locks” the bowl into place during crushing operations. When the
operation is over, the operator must be able to release the lock so that he or she can move
the bowl as needed for the next operation.
The relevant claims of the ’886 patent relate to a mechanism that performs the
locking function. The general mechanism can be described as a lock ring. It is a ring that
sits on top of the ring-shaped bowl support. Like the surface of the bowl support, the
surface of the lock ring has threads mated to the threads on the outside surface of the
bowl. Inside the lock ring is a hydraulic cylinder, which consists of a piston and a chamber.
2
The ’886 patent uses the term “annular,” and the parties have agreed that this term
means “ring shaped.” Throughout this opinion, I will use the terms “ring-shaped” and
“annular” interchangeably.
3
A ring-shaped groove formed into the lock ring serves as the chamber for a ring-shaped
piston. The bottom of the piston abuts the upper surface (or rim) of the bowl support.
When the operator wants to lock the bowl in place, hydraulic fluid is provided to the upper
part of the chamber inside the lock ring, and hydraulic pressure forces the piston downward
against the rim of the bowl support. This produces an equal and opposite force that drives
the lock ring upward. The threads of the lock ring thus push up against the threads of the
bowl, and the result of the threads pushing against each other is a binding lock that
prevents the bowl from moving during operation. (In the preferred embodiment, the lockring threads push against inserts that have been inserted between the lock-ring threads
and the bowl threads.) When the operation is over, hydraulic pressure is released, and this
allows the bowl to be moved in preparation for the next job. JCI’s animation demonstrates
this process, and the figure below depicts the lock ring in the “locked” position.
4
II. RELEVANT CLAIM LANGUAGE
JCI alleges that Metso infringes claims 8 and 9 of the ’886 patent, which are printed
below. The disputed claim language is underlined.
8. A rock crusher comprising:
a conical shaped bowl, a cone mounted for oscillating movement within the
conical shaped bowl, said bowl being vertically adjustable relative to
the cone for crushing rock to specific sizes;
a frame including an annular bowl support, said bowl adjustably supported
within said annular bowl support for vertical adjustment of the bowl
relative to the cone;
said vertical adjustment provided by mated screw threads on said support
and said bowl whereby the bowl is screwed up or down on the support
and thereby closer or farther away from said bowl;
an annular lock ring having a screw thread mated to the bowl and screwed
onto the bowl and defining an annular surface in abutment with an
annular surface of the support;
an annular chamber provided in one of the lock ring and bowl support and
an annular piston fitted to the chamber, said piston providing the
abutment surface for one of said lock ring and bowl support; and
a hydraulic fluid source providing hydraulic fluid to the chamber, and a
control for controlling the hydraulic fluid flow to the chamber for urging
movement of the annular piston toward the surface of the other of the
5
lock ring and support and thereby producing a binding-type lock that
inhibits screw movement of the bowl.
9. A rock crusher as defined in claim 8 wherein the piston is provided with a
seal portion between the piston and hydraulic fluid and expands under
pressure to seal the chamber and induces movement of the piston against
the other of the lock ring and bowl support.
III. DISCUSSION
A.
Principles of Claim Construction
A United States patent generally consists of a “specification,” along with one or more
drawings. See Kristen Osenga, Linguistics and Patent Claim Construction, 38 Rutgers L.J.
61, 63-82 (2006). The specification consists of a written description of the invention and
concludes with one or more “claims.” See 35 U.S.C. § 112. The written description is
written in prose and includes a background of the invention as well as detailed information
on how to make, use, and/or perform the invention. Osenga, supra, at 63. The claims
appear after the written description. Id. Although the claims are technically part of the
specification, patent practitioners often speak as though the specification were separate
from the claims. Id. at 63 n.8. When practitioners use “specification” in this manner, they
are referring to the written description. I will follow this practice.
Each claim in a patent is numbered and is written as a single sentence, and each
sentence sets out the boundaries of a single invention. Thus, if a patent contains five
claims, the patentee is “claiming” five distinct (though usually related) inventions. A subset
of the claims can be “dependent.” Roughly speaking, a dependent claim incorporates all
6
of the language from an independent claim and then adds something to it. See, for
example, claims 8 and 9 of the ’886 patent. Claim 8 is independent, and claim 9 (the
dependent claim) builds off of it. See Id. at 63 n.10.
It is often said that a claim defines the “metes and bounds” of an invention. See
Craig A. Nard, The Law of Patents 394 (2008). What is meant is that the claim defines the
scope of the patentee’s right to exclude others from making, using, offering for sale, selling,
or importing the invention. Osenga, supra, at 64. So, for example, if another person
makes a device that falls within the metes and bounds as defined by the claim, that person
can be deemed a “trespasser” and is liable for infringement. Thus, claims serve two
functions: (1) defining the scope of the patentee’s right to exclude, and (2) putting others
on notice of the scope of that right so that they can avoid infringement. Id.
When the parties in patent litigation disagree on what the claims mean – that is,
when the parties disagree about the scope of the patentee’s right to exclude – judges are
called upon to resolve the disagreement. See, e.g., Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1455 (Fed Cir. 1998) (in banc) (“the totality of claim construction is a legal
question to be decided by the judge”). In order to determine what the claims mean, the
judge must decide what they would mean to a person having ordinary skill in the relevant
art. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005) (en banc).
And deciding what the claims would mean to a person having ordinary skill in the art
requires the judge to consider the claims in context rather than in a vacuum. This means
that the judge must read the claims in the context of the entire patent, including the
specification, id. at 1313, and adopt any background information that the hypothetical
7
person having ordinary skill in the art would employ when reading the claims, id. at 1314.
There is no magic formula or catechism governing this process. Id. at 1324.
B.
Construction of Disputed Claim Language
1.
“. . . and thereby closer or farther away from said bowl.”
The first disputed phrase appears in the third indented clause of claim 8: “said
vertical adjustment provided by mated screw threads on said support and said bowl
whereby the bowl is screwed up or down on the support and thereby closer or farther away
from said bowl.”
The first three indented clauses provide the most relevant context for understanding
the disputed language, as these three clauses together explain the way that the bowl is
adjusted relative to the cone by screwing it into and out of the bowl support. The first
clause describes the bowl and the cone – i.e., the heart of any cone-type rock crusher.
The first clause also explains that the bowl is “vertically adjustable relative to the cone for
crushing rock to specific sizes.” The second clause explains that the frame of the rock
crusher includes a ring-shaped bowl support, and that the bowl and the bowl support are
situated such that the bowl can be vertically adjusted “relative to the cone.” The third
clause explains that the bowl and the bowl support have mated threads and that the bowl
is moved by screwing the bowl into (down) and out of (up) the bowl support.
The dispute arises because the underlined language contains a drafting error. As
written, the claim language states that the bowl is screwed up or down on the support and
thereby closer to or farther away from “said bowl.” Obviously, this should be “said cone.”
It is metaphysically impossible for a bowl (or any object) to move closer to or farther away
8
from itself, since that implies a contradiction: the bowl moving and remaining stationary at
the same time. Moreover, the context of the entire patent, including the remainder of claim
8 and the specification, makes clear that the invention relates to a cone-type rock crusher
in which the bowl is movable so that the space between it and the cone can be adjusted.
No person having ordinary skill in the art could think that the invention includes a bowl that
moves closer to or farther away from itself. Instead, it would be clear that what is claimed
is a bowl that moves closer to or farther away from the cone mentioned in the previous two
indented clauses. Thus, since I am to give claims the meaning they would be given by a
person having ordinary skill in the art, I construe the disputed language to mean “and
thereby closer to or farther away from said cone.”
Metso points out that courts may not “redraft claims” in the course of claim
construction, see Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir.
2004), and it will no doubt characterize my claim construction as a redrafting of claim 8.
However, a court does not “redraft” a claim simply by altering its language. If that were so,
every claim-construction decision would involve redrafting claims, since claim construction
is simply the process of attempting to clarify the meaning of a claim by substituting one set
of words for another. See Dan L. Burk & Mark A. Lemley, Quantum Patent Mechanics, 9
Lewis & Clark L. Rev. 29, 51 (2005) (describing claim construction as “interpreting the
words of patent claims using other, different words”). A court redrafts a claim only when
it changes the meaning of that claim. But since meaning is determined by background and
context rather than by reading individual words in a vacuum, see Lexion Med., LLC v.
Northgate Techs., Inc., 641 F.3d 1352, 1356 (Fed. Cir. 2011); Craig A. Nard, A Theory of
Claim Interpretation, 14 Harv. J.L. & Tech. 1, 43-52 (2000); John R. Searle, Literal
9
Meaning, in Expression and Meaning 117, 120 (1979), a court can change a word in a
claim without changing the meaning of that claim – i.e., without altering the scope of the
patentee’s right to exclude or changing the public’s understanding of the scope of that right.
For example, when someone utters the sentence, “I am going to take the walk for a dog,”
an ordinary user of English will understand that the speaker intends to take her dog for a
walk, just as if the speaker had said, “I am going to take the dog for a walk.” Changing
“walk” to “dog” and “dog” to “walk” does not change what the hearer understands. It just
expresses what the hearer understands in the conventional way. The same is true when
I change the word “bowl” to the word “cone.” Even though the claim says “bowl,” a person
having ordinary skill in the art will understand from the surrounding context – the rest of the
claim, the specification, and the person’s background knowledge, which includes the fact
that people sometimes make mistakes when they speak and write – that the invention
includes a bowl that moves closer to or farther from a cone, not a bowl that moves closer
to or farther from itself. Thus, the claim as written notifies a person having ordinary skill
in the art that the patentee’s right to exclude extends to a cone-type rock crusher in which
the bowl moves closer to or farther away from the cone.
Chef America, the case on which Metso primarily relies for the proposition that
courts may not redraft claims, is distinguishable from the present case. The invention at
issue in that case related to a process for making dough having a “light, flaky, crispy
texture.” 358 F.3d at 1372. The disputed claim language required “heating the resulting
batter-coated dough to a temperature in the range of about 400° F to 850° F.” Id. at 1373.
The district court and the Federal Circuit interpreted this language to mean that “[t]he
dough is to be heated to the specified temperature.”
10
Id.
The problem with this
interpretation for the patentees was that when the dough is heated to that temperature it
is burned to a crisp. What the patentees had meant to say was that the dough is to be
heated in an oven in which the air had been heated to the specified temperature.
However, the Federal Circuit found that the language that the patentees had used
“unambiguously require[d]” that the dough itself be heated to the specified temperature,
even if that produced a “nonsensical” result. Id. at 1374. As the court put it, “nothing even
remotely suggests that what is to be heated is not the dough but the air inside the oven in
which the heating takes place. Indeed, the claim does not even refer to an oven.” Id. at
1373.
In contrast, in the present case there is much that suggests that the bowl is to be
moved closer to or farther away from the cone, rather than the bowl, including the
surrounding claim language and the specification, all of which refers to a cone and states
that the bowl is vertically adjustable relative to the cone. Moreover, it is actually possible
to heat dough to a temperature of 400° F to 850° F, whereas it is metaphysically
impossible to move a bowl closer to or farther away from itself. Thus, the situation
presented in Chef America is not presented here.
I also note that the Chef America decision was driven in part by evidence in the
prosecution history suggesting that “the patentees intentionally used ‘to’ rather than ‘at’ in
drafting the temperature requirements of the claim.” Id. at 1374. This evidence consisted
of a choice that the patentees had made between two phrases that appeared in the
prosecution history, one of which stated that the dough was to be heated “at” the specified
temperature, and another which stated that the dough was to be heated “to” the specified
temperature. To the Federal Circuit, it “appear[ed] that the patentees consciously selected
11
‘to’ rather than ‘at.’” Id. at 1375. In contrast, there is no evidence in the present case
suggesting that the patentees made a conscious choice between two possible ways of
drafting the third indented clause of claim 8 – one stating “said bowl” and the other stating
“said cone.” Rather, as far as the prosecution history in the record reveals, the “said bowl”
drafting error was in the claim from the beginning and was overlooked throughout the
prosecution process by both the patentees and the examiner. (Cross Decl., Ex. A [Docket
#39-1] at JCI-000521.)
Finally, unlike in Chef America, in the present case JCI has asked me to correct the
’886 patent by changing “said bowl” to “said cone” pursuant to Novo Industries, L.P. v.
Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003).3 Under Novo, I may correct an
error in a claim only if: (1) the correction is not subject to reasonable debate based on
consideration of the claim language and the specification, and (2) the prosecution history
does not suggest a different interpretation of the claims. Id. Both of these conditions are
met in the present case. First, the correction is not subject to reasonable debate because
the claim language as written requires something that is metaphysically impossible, and
the rest of the claim and the specification make clear that the bowl is to move relative to
3
In Chef America, the court stated as follows:
Chef America does not contend that the patentees' use of “to” rather than
“at” was a draftsman's mistake. The patentees made no attempt to have
such an error corrected, either by obtaining a certificate of correction from
the Patent and Trademark Office pursuant to 35 U.S.C. § 255, or by action
of the district court [pursuant to Novo Industries].
358 F.3d at 1375.
12
the cone.4 Second, nothing in the prosecution history suggests a different interpretation.
Thus, I will correct the patent by changing “said bowl” to “said cone.” Accord CBT Flint
Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358-61 (Fed. Cir. 2011) (district court
errs when it fails to correct an obvious error in a patent); Group One Ltd. v. Hallmark
Cards, Inc., 407 F.3d 1297, 1303 (Fed. Cir. 2005) (district court can correct patent when
“error is evident from the face of the patent”); Hoffer v. Microsoft Corp., 405 F.3d 1326,
1331 (Fed. Cir. 2005) (district court errs when it fails to correct an error that is evident on
the face of the patent); Lemelson v. General Mills, Inc., 968 F.2d 1202, 1203 & n.3 (Fed.
Cir. 1992) (permitting correction of a patent by inserting the word “toy” in a claim where the
patent on its face was clearly directed at a toy trackway rather than an actual trackway).
However, I want to emphasize that even if I could not “correct” the claim language under
Novo, the language in its uncorrected form would still mean that the bowl moves closer to
or farther away from the cone. Again, this is because the words “said bowl” have no
meaning in isolation, and because the relevant context makes clear to a person having
ordinary skill in the art that the scope of the patentees’ right to exclude includes a bowl that
moves closer to or farther away from a cone, not a bowl that moves closer to or farther
away from itself. Essentially, then, a district court’s power to “correct” a claim under Novo
is nothing more than the power to express the meaning of a claim in a conventional way,
4
At the Markman hearing, Metso suggested that it would be reasonable to correct
the claim by changing “said bowl” to “said bowl support,” and that therefore one can
reasonably debate the correction. However, Metso’s suggestion is not reasonable. The
claim language and the specification state that the bowl moves relative to the cone by
moving up and down “on the [bowl] support.” Col. 6 l.37. Given this context, a person
having ordinary skill in the art could not reasonably conclude that the bowl moves vertically
on the support and closer to or farther away from that same support at the same time.
13
like changing “walk” to “dog” and “dog” to “walk” in my example, above. See I.T.S. Rubber
Co. v. Essex Rubber Co., 272 U.S. 429, 441-42 (1926) (explaining that a court’s correction
of an obvious error in a claim “is not in any real sense, a re-making of the claim; but is
merely giving to it the meaning which was intended by the applicant and understood by the
examiner”).
Before turning to the next disputed phrase, I will deny Metso’s motion for summary
judgment of non-infringement and invalidity. That motion depends on construing claim 8
as requiring a bowl that moves closer to or farther away from itself. Since I have rejected
that construction, it follows that the motion for summary judgment must be denied.
2.
“. . . an annular surface . . .”
This disputed language appears in the fourth indented clause of claim 8. The
parties have agreed that “annular” means “ring shaped,” and thus the parties agree that
“an annular surface” means “a ring-shaped surface.” The dispute arises because JCI
proposes that I add “of the lock ring” to the end of the first occurrence of “an annular
surface.” Thus, under JCI’s proposed construction, the fourth indented clause of claim 8
would mean: a ring-shaped lock ring having a screw thread mated to the bowl and screwed
onto the bowl and defining a ring-shaped surface of the lock ring in abutment with a ringshaped surface of the support.
Metso argues that I should not add “of the lock ring” to the end of the first
occurrence of “annular surface” because it is not already there. However, Metso does not
contend that the annular surface being referred to is the surface of anything other than the
lock ring. (Markman Hearing Tr. at 16-17.) Moreover, because “annular lock ring” is the
subject of the clause, the clause as a whole tells us that it is the lock ring’s surface that is
14
in abutment with the annular surface of the bowl support. Thus, I will adopt JCI’s proposed
construction. This does not mean that I am giving “annular surface” different meanings in
different parts of the claim. Rather, I am just recognizing that “of the lock ring” is contained
in the meaning of the fourth indented clause by virtue of the fact that “annular lock ring” is
the subject of that clause.
3.
“. . . an annular piston fitted to the chamber . . .”
Although the parties separate “piston” and “fitted to the chamber” into two chunks
and ask that I construe them separately, these terms are closely related and I find it helpful
to discuss them together. Metso wants me to construe this phrase to mean “an annular
component that fits snugly into the chamber and moves under fluid pressure that is
designed to prevent fluid from escaping from the chamber.” JCI wants me to construe this
phrase to mean “an annular component that moves in response to a change in the
pressure on one side thereof that is received in the chamber in such a manner that the
piston can move with respect thereto.”
The heart of the dispute is whether the claim language requires the piston to
perform the function of preventing hydraulic fluid from leaking from the chamber. Everyone
agrees that a person having ordinary skill in the art would know that a rock-crusher lock
ring that leaks fluid doesn’t work. Metso contends that this means that a person having
ordinary skill in the art would understand claim 8 to require the fit between the piston and
the chamber to be tight enough to prevent leakage. JCI, however, contends that claim 8
does not contain any limitation addressed to preventing leakage, and that therefore the fit
between the piston and the cylinder does not have to be tight enough to perform that
function.
15
I agree with JCI. The fifth indented clause of claim 8 requires a hydraulic cylinder
comprising a piston and a chamber. Both the piston and the chamber are ring shaped, and
the words “fitted to” convey the notion that the piston and the chamber work together to
form a hydraulic cylinder. Based on the information presented in the parties’ declarations
and at the Markman hearing, I conclude that a person familiar with hydraulic cylinders
would expect the piston to fit snugly in the chamber, since it would be unusual to find, say,
a piston with a diameter of one inch inside a chamber with a diameter of ten inches. And
since nothing in the claims or the specification indicates that such an unusual hydraulic
cylinder was intended, I conclude that a person having ordinary skill in the art would expect
the piston to fit snugly in the chamber. But this does not mean that such a person would
expect the piston to perform the function of preventing fluid from leaking from the chamber.
Indeed, as Metso’s counsel conceded at the Markman hearing, although it would be
possible “in theory” to design a piston that prevented leakage yet still was able to move in
response to hydraulic pressure, it would be a challenge to do so. (Markman Hearing Tr.
at 65-66.)
Likewise, nothing in the specification suggests that the piston is supposed to
perform a sealing function. Instead, the specification explains that a separate seal must
be used. For example:
Locking of the bowl to the bowl support (frame) as required for the crushing
operation is provided by an annular seal and piston. An annular cavity is
provided on the under side of the ring and the annular seal and piston is
fitted to the cavity. A space above the seal and piston and within the cavity
provides an expansion chamber. Hydraulic fluid pumped into the chamber
forces the piston, e.g., against the frame with the lock ring screwed onto the
bowl to generate the desired binding force. The annular piston produces the
desired force consistently around the entire circumference.
16
’886 Patent, col. 2, l.62 to col. 3, l. 4 (emphasis added). Furthermore, claim 9 of the patent,
which builds off of claim 8, does claim a specific sealing structure. If claim 8 already
included a component that sealed the chamber, what would claim 9 be adding? See
Phillips, 415 F.3d at 1315 (“the presence of a dependent claim that adds a particular
limitation gives rise to a presumption that the limitation in question is not present in the
independent claim”).5 Thus, a person having ordinary skill in the art who reads the entire
patent – including the specification, claim 8 and claim 9 – would understand that claim 8
does not require that the piston perform a sealing function. Rather, in both claim 8 and
claim 9, the piston simply moves in response to hydraulic pressure, leaving the sealing
function to other components. In claim 8, the patentees do not claim any specific
component that performs this sealing function, whereas in claim 9 they do.
Therefore, I construe the disputed language as follows: a ring-shaped component
that fits snugly into the chamber and moves relative to the chamber in response to fluid
pressure on one side.
4.
“. . . providing hydraulic fluid to the chamber . . .”
This phrase appears in the sixth indented clause: “a hydraulic fluid source providing
hydraulic fluid to the chamber, and a control for controlling the hydraulic fluid flow to the
chamber for urging movement of the annular piston . . . .” Metso contends that I should
construe this language to mean “pumping hydraulic fluid into contact with the internal walls
of the chamber.” JCI contends that I should construe this language to mean “providing
5
Metso suggests that claim 9 adds a second sealing component, akin to wearing a
belt and suspenders at the same time. However, if such an unusual result had been
intended, we would expect to see some mention of it in the specification, rather than the
consistent distinction between the piston and the seal that we actually find.
17
hydraulic fluid to the chamber so that a change in the pressure in the chamber will
influence the piston to move with respect to the chamber.” This dispute arises because
Metso’s accused device pumps hydraulic fluid into a bladder that is in a chamber, and then
the expansion of the bladder in the chamber exerts pressure on a piston. If I construe
claim 8 to require hydraulic fluid to come into contact with the walls of the chamber, then
the claim will not read on Metso’s bladder-lined chamber, since the bladder is between the
fluid and the walls.
I conclude that the claim does not require hydraulic fluid to make contact with the
walls of the chamber. As used in the disputed language, “to” is a function word that
indicates movement toward a place. See Webster’s Third New International Dictionary
2401 (1986). Thus, the disputed language conveys the notion that the fluid moves from
the source to the chamber. It does not impose any restrictions on what happens once the
fluid reaches the chamber (such as touching the chamber’s internal walls). Other language
in the claim explains what happens when the fluid arrives at the chamber: it urges
movement of the annular piston. Although the claim does not specify the manner in which
the fluid urges movement, a person having ordinary skill in the art would understand that
the piston will move only if the fluid is able to produce hydraulic pressure. However, the
precise manner of producing hydraulic pressure is not recited in the claim. As far as the
claim is concerned, one could use a seal (which would require the fluid to come into
contact with the walls), a bladder (which would not), or any other component that would
cause the provision of fluid to the chamber to produce hydraulic pressure. Although the
specification describes use of a seal, it does not suggest that the invention is limited to a
device that uses a seal. Thus, nothing in the patent suggests that claim 8 requires
18
hydraulic fluid to come into contact with the internal walls of the chamber. I therefore adopt
JCI’s proposed construction of the disputed language.
5.
“. . . a control for controlling the hydraulic fluid flow to the
chamber . . .”
The next disputed phrase also appears in the sixth indented clause: “a hydraulic
fluid source providing hydraulic fluid to the chamber, and a control for controlling the
hydraulic fluid flow to the chamber for urging movement of the annular piston . . . .” JCI
contends that this phrase means “an inherent feature of the hydraulic fluid source that may
be turned on or off to allow or stop the flow, or adjusted to increase or decrease the flow,
of hydraulic fluid to the chamber.” Metso contends that this phrase should be construed
as a “means-plus-function” claim element.
“Means-plus-function” refers to a technique for drafting claims under § 112, ¶ 6 of
Title 35. See 35 U.S.C. § 112, ¶ 6.6 Generally, means-plus-function claiming involves
defining a claim element by what it does (its function) rather than by what it is (its
structure). See Robert C. Faber, Faber on Mechanics of Patent Claim Drafting § 3:29.1
(6th ed. 2011). A patentee will decide to draft portions of a claim in means-plus-function
form when he or she wants to claim a function without limiting the invention to a particular
structure. For example, in the present case, the patentees have specified in claim 8 that
the lock ring is locked into place through the use of hydraulic components. The hydraulic
6
The statutory text states:
An element in a claim for a combination may be expressed as a means or
step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.
19
components – the piston, the cylinder, the fluid source, and the control – are “structure,”
and thus this part of the claim was not drafted in means-plus-function form. However, if
the patentees had not wanted to limit the invention to a device that uses hydraulic
pressure, they could have omitted any reference to hydraulic components and instead
claimed “means for” locking the lock ring into place. If the patentees had chosen this
means-plus-function form, the claim would be deemed to cover any structure disclosed in
the specification plus any equivalents of that structure. See id. Thus, assuming that the
patentees had used the means-plus-function form and disclosed hydraulic components in
the specification, the claim would be read to incorporate hydraulic components plus any
equivalents of hydraulic components, such as components that utilize gas pressure rather
than fluid pressure.
In order to take advantage of means-plus-function claiming, however, the patentee
must disclose sufficient structure for performing the function in the specification. This
requirement stems from the second paragraph of § 112, which requires that claims
particularly point out and distinctly claim the subject matter that the applicant regards as
his or her invention. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 138182 (Fed. Cir. 1999). The Federal Circuit has held that one will not know what a claim
element in means-plus-function form means unless the structure that corresponds to the
means is disclosed in the specification. Id. at 1382. If the patentee fails to disclose
corresponding structure in the specification, the claim containing the means-plus-function
language will be deemed to be invalid. See, e.g., In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1315 (Fed. Cir. 2011).
20
In the present case, Metso argues that “a control for controlling the hydraulic fluid
flow to the chamber” is in means-plus-function form. Its reason for making this argument
is that the patentees did not disclose any structure that corresponds to the means in the
specification. Thus, if I determine that the disputed language is in means-plus-function
form, claim 8 will be deemed invalid.
The Federal Circuit has adopted a framework for determining whether claim
language is in means-plus-function form. See, e.g., Inventio AG v. Thyssenkrupp Elevator
Americas Corp., 649 F.3d 1350, 1356 (Fed. Cir. 2011). Under this framework, the use of
the word “means” triggers a rebuttable presumption that the language is in means-plusfunction form. Conversely, where the claim language does not contain the word “means,”
the court presumes that the language is not in means-plus-function form. When the claim
language does not contain the word “means,” the presumption can be overcome if the
challenger demonstrates that the claim language fails to “recite sufficiently definite
structure” or else recites “function without reciting sufficient structure for performing that
function.” Id. (internal quotation marks omitted). However, “the presumption flowing from
the absence of the term ‘means’ is a strong one that is not readily overcome.” Id.
In the present case, the disputed language does not contain the word “means,” and
so the strong presumption against the claim being in means-plus-function form applies.
Metso attempts to rebut this presumption by arguing that the noun “control” does not recite
sufficient structure for performing the function of “controlling the hydraulic fluid flow to the
chamber.” However, the extrinsic evidence in this case makes clear that artisans in the
field of rock crushers associate the term “control” with structure rather than function. As
Metso concedes, such artisans are familiar with “conventional ‘control’ mechanisms for
21
delivering hydraulic fluid to rock crushing systems.” (Metso Br. [Docket #25] at 18.) Metso
goes on to argue that artisans would not know of any specialized hydraulic control systems
that might be necessary to control hydraulic pressure in the particular locking system
claimed in claim 8, but nothing in claim 8 indicates that the patentees had anything other
than a conventional control mechanism in mind. (See Vendelin Decl. [Docket #19-3] ¶ 21
(stating that claim 8 calls for a “conventional” control)). Put differently, in using the phrase
“control for controlling the hydraulic fluid flow,” the patentees were not referring to anything
novel; they were simply incorporating the concept of a conventional hydraulic fluid control
into their invention, much the same way that an inventor of a novel automobile might
incorporate a conventional wheel into an invention.7
Metso submits affidavits from artisans stating that the term “control” does not refer
to any “specific part,” and that it could be understood to refer to “a plethora of
components.” (Lawnicki Decl. [Docket #38] ¶ 11.) However, to avoid the application of
means-plus-function claiming rules, a claim term does not have to “denote a specific
structure.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359 (Fed. Cir.
2004) (emphasis added). Rather, “it is sufficient if the claim term is used in common
parlance or by persons of skill in the pertinent art to designate structure, even if the term
7
Metso suggests that there is something special about the means for controlling
hydraulic fluid in a rock crusher that doesn’t incorporate a bladder. However, Metso has
cited nothing that indicates that a control in a bladder-less rock crusher is any different than
a control in a bladder-dependent rock crusher. In either device, the function of the control
is to pump hydraulic fluid into a confined space so that pressure builds up and pushes
something against the bowl. As far as the record reveals, the structure of the control does
not have to be modified when the confined space is a sealed chamber (as in JCI’s device)
rather than a bladder (as in the accused device). Thus, a conventional control mechanism
will suffice.
22
covers a broad class of structures and even if the term identifies the structures by their
function.” Id. (emphasis added). Accord Duratech Indus. Int’l, Inc. v. Bridgeview Mfg.,
Inc., 292 Fed. Appx. 931, 933 (Fed. Cir. 2008) (claim term does not have to “conjure up
any one specific structure”; rather, it is enough if term conveys to one skilled in the art a
certain “genus” of structures). Here, Metso’s experts demonstrate that they know the
broad class of structures being designated by the word “control.” They admit that they
engineer the relevant control mechanisms all the time. (Hall Decl. [Docket #20] ¶ 21.)
Although Metso’s experts emphasize that significant engineering work is required to
customize a control to a specific application, that does not change the fact that “control”
designates a general class of structural components. Presumably, one has to customize
many parts of a rock crusher – including the bowl, the cone and the frame – rather than
simply pull them “off the shelf” for use in a particular application, but that does not
transform “bowl,” “cone” and “frame” into functional terms. The same is true for “control.”
Accordingly, I will not construe “control for controlling the hydraulic fluid flow to the
chamber” as a means-plus-function element. This conclusion is enough to resolve the
parties’ dispute over the meaning of this part of the claim, and therefore I see no need to
determine whether I should go one step farther and adopt JCI’s proposed construction.
6.
Claim 8: “. . . urging movement of the annular piston . . .”; Claim 9: “. . .
induces movement of the annular piston . . .”
The dispute over the next two chunks of claim language relates back to the dispute
over the meaning of the word “piston,” which I resolved above. The parties agree on the
meaning of the remaining terms: “urging” means “causing,” “induces” means “causes,”
“annular” means “ring shaped,” and “movement” does not need to be construed. Thus, I
23
will simply insert my definition of “piston fitted to the chamber” (minus the “fitted to the
chamber” language) into these phrases: the phrase in claim 8 means “causing movement
of the ring-shaped component that moves relative to the chamber in response to fluid
pressure on one side,” and the phrase in claim 9 means “causes movement of the ringshaped component that moves relative to the chamber in response to fluid pressure on one
side.”
7.
Claim 8: “. . . the other of the lock ring and support . . .”; Claim 9: “. . .
the other of the lock ring and bowl support.”
The next two chunks of disputed language relate to the patentees’ attempt to draft
their claims to cover a device in which the piston and chamber are located in either the lock
ring or the bowl support. Functionally, it makes no difference where they are located. If
they are in the lock ring, then the piston will push against the surface of the bowl support.
If they are in the bowl support, then the piston will push against the surface of the lock ring.
Either way, the force of hydraulic pressure will bind the lock ring and the bowl together,
thereby preventing movement of the bowl.
To claim both alternatives, the patentees used the following technique: In the fifth
indented clause, they introduced the annular chamber as an element by specifying that the
chamber is provided “in one of the lock ring and bowl support.” This is a convention in
claim drafting used to indicate that a choice must be made between two possibilities. Here,
the choice is to provide the chamber in either the lock ring or the bowl support. Later in the
same indented clause, the patentees introduced the annular piston as an element,
specified that the piston is fitted to the chamber, and specified that the surface of the piston
provides the abutment surface for “one of said lock ring and bowl support.” This means
24
that the piston provides the abutment surface for either the lock ring or the bowl support,
depending on the choice that was made with respect to the location of the chamber: if you
choose to put the chamber in the lock ring, the piston provides the abutment surface for
the lock ring; if you choose to put the chamber in the bowl support, the piston provides the
abutment surface for the bowl support. In claim 8, the sixth indented clause explains that
when hydraulic pressure builds up in the chamber, the piston moves toward the surface
of “the other of the lock ring and [bowl] support.” This means that the piston moves toward
the surface of the component that does not contain the chamber. Thus, if you choose to
put the chamber in the lock ring, the piston moves toward the surface of the bowl support.
If you choose to put the chamber in the bowl support, the piston moves toward the surface
of the lock ring. Claim 9, the dependent claim, also speaks in terms of moving the piston
against “the other of the lock ring and bowl support.” Again, this means that the piston
moves against the surface of the component that does not contain the chamber.
Metso argues that the above-described technique renders claims 8 and 9 “insolubly
ambiguous.” This is a way of saying that claims 8 and 9 are indefinite and therefore do not
satisfy § 112, ¶ 2, which requires claims to particularly point out and distinctly claim the
subject matter which the applicant regards as his invention. Metso argues that using “one
of the lock ring and bowl support” twice and “the other of the lock ring and bowl support”
twice leaves the ordinary artisan with no way of determining which element is being
referred to where. But I think my description of the patentees’ drafting technique, above,
shows that Metso is wrong. If not, I can be more explicit. In the fifth indented clause in
claim 8, the phrase “one of the lock ring and bowl support” is used twice. However, the
second occurrence includes the word “said,” which makes clear that the second
25
occurrence refers to whatever element was chosen in the first occurrence, rather than a
fresh choice between lock ring and bowl support. Even if “said” had not been included, it
would be clear that the same element is being referred to, since the overall context of the
clause makes clear that the piston provides the abutment surface for whatever component
contains the chamber.
Context also makes clear that the two occurrences of “the other of” the lock ring and
bowl support are references to the component that does not contain the chamber. This
is because both occurrences appear in phrases explaining that hydraulic pressure is used
to push the piston against the surface of something in order to lock the bowl into place.
Given the structure explained in earlier portions of claim 8, that something could only be
the one of the lock ring and bowl support that does not contain the chamber.8
Accordingly, claim 8 and claim 9 are not insolubly ambiguous. Each occurrence of
the disputed language means “the one of the lock ring and bowl support that does not
include the ring-shaped chamber.”
8.
“. . . wherein the piston is provided with a seal portion between the
piston and hydraulic fluid and expands under pressure to seal the
chamber and induces movement of the piston . . .”
This language appears in claim 9, the dependent claim. The parties have identified
the disputed language as “expands under pressure,” but I find that the larger chunk of
8
In its briefs, Metso develops an analogy to ordering drinks for three people to show
that using the language “one of element A and B” multiple times leads to ambiguity.
(Metso Br. [Docket #25] at 22.) Although it is not worth explaining this analogy in detail,
I will point out that the flaw in the analogy is that it assumes that three drinks are being
ordered, whereas in the ’886 patent, context makes clear that only two components – a
lock ring and a bowl support – are being “ordered.” Each use of “one of the lock ring and
bowl support” refers to the same component, and each use of “the other of the lock ring
and bowl support” refers to the same component.
26
language identified in the section heading, above, provides the appropriate scale for
determining meaning.
Essentially, the dependent claim claims the preferred embodiment of the invention,
in which the hydraulic chamber is sealed with a “seal portion” that is on top of the piston.
The image below is a cross-sectional view of the inside of the lock ring. The seal portion
is represented as 59a, and the piston is represented as 59.
When hydraulic fluid is provided to the chamber above the seal portion, the seal portion
expands under pressure. This expansion both seals the chamber and causes the piston
to move downward and exert the forces that lock the bowl into place.
The problem that gives rise to the parties’ dispute is that the claim language is
awkwardly drafted. The grammar of the claim implies that “the piston” (1) is provided with
a seal portion between the piston and hydraulic fluid, (2) expands under pressure to seal
the chamber, and (3) induces movement of the piston. This, however, does not make
sense, since the structure identified in claim 8 (which claim 9 takes for granted) requires
the hydraulic pressure to induce movement of the piston. Further, the notion of a piston
moving itself is nonsensical, and the specification explains that it is the seal portion, not the
piston, that expands under pressure to seal the chamber and that induces movement of
the piston. Finally, at the Markman hearing, JCI’s expert testified that if the piston itself
27
expanded, it would act as a “plug” that would render the hydraulic cylinder inoperable.
(Markman Hearing Tr. at 48-49.) Thus, when the disputed language is read in light of the
whole of claim 8, the specification, and the background knowledge of an ordinary artisan,
it becomes clear that it means: wherein a piston is provided with a seal portion between
the piston and the hydraulic fluid, and wherein the seal portion expands under pressure to
seal the chamber and induces movement of the piston. Because this is the meaning that
a person having ordinary skill in the art would assign to the claim language, I adopt it as
my construction of claim 9.
Metso argues that the grammar and syntax of the disputed language should be
given dispositive weight, and that therefore we have no choice but to construe the
language in a way that produces a nonsensical result – namely, a result in which the piston
expands and somehow moves itself. However, although grammar and syntax are certainly
useful in determining meaning, they do not trump all other clues regarding the meaning of
a set of words. As the Seventh Circuit has recognized:
Sentences are not isolated units of meaning, but take meaning from other
sentences in the same document.
. . . To interpret a contract or other document, it is not enough to have
a command of the grammar, syntax, and vocabulary of the language in which
the document is written. One must know something about the practical as
well as the purely verbal context of the language to be interpreted. . . . A
blinkered literalism, a closing of one's eyes to the obvious, can produce
nonsensical results . . . .
Beanstalk Group, Inc. v. AM General Corp., 283 F.3d 856, 860 (7th Cir. 2002). More
succinctly, “[g]rammar needn't trump sense.” Miller v. McCalla, Raymer, Padrick, 214 F.3d
872, 875 (7th Cir. 2000). In the present case, the context of claim 9 – including all of claim
8 (on which claim 9 is built), the specification, and the background knowledge of an
28
ordinary artisan – outweighs the grammatical clues as to the meaning of the claim. A
person having ordinary skill in the art would thus have notice that what is claimed is a seal
portion that expands under pressure and induces movement of a piston, not a piston that
expands and induces movement of itself.
I realize that the cases I have cited are from the Seventh Circuit rather than the
Federal Circuit, and that they involve contractual and statutory interpretation rather than
claim construction. However, the principles being discussed apply to language in general
rather than to anything particular to language as used in contracts or statutes. Moreover,
the Federal Circuit caselaw is not inconsistent with these principles. Although one case
states that “[a] claim must be read in accordance with the precepts of English grammar,”
In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983), I do not read this as an ironclad rule of
claim construction holding that the meaning implied by the grammar of a sentence when
that sentence is read in isolation trumps the meaning of that sentence when it is read along
with its surrounding context by a person having ordinary skill in the art. In any event, more
recent cases indicate that grammar and syntax are only “instructive” as to the “true
meaning” of a claim. Credle v. Bond, 25 F.3d 1566, 1571 (Fed. Cir. 1994); accord
Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 1553 (Fed. Cir. 1997)
(implying that syntax is only one of several signs indicating the meaning of a claim term),
abrogated on other grounds by Cybor Corp v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir.
1998).
29
IV. CONCLUSION
For the reasons stated, I construe the ’886 patent as described above. Further, IT
IS ORDERED that Metso’s motion for summary judgment of non-infringement and invalidity
is DENIED. FINALLY, IT IS ORDERED that JCI’s motion to file a sur-reply brief is
GRANTED.
Dated at Milwaukee, Wisconsin, this 28th day of November 2011.
s/__________________________________
LYNN ADELMAN
District Judge
30
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