Componex Corporation v. Electronics For Imaging, Inc.
ORDER on Claim Construction Relating to the U.S. Patent No. 6,113,059. Defendant EFI's construction of the disputed terms, as described in this opinion, are adopted by the court. Defendant EFI's motion for non-infringement 41 is GRANTED w ith respect to claims 5-22 as to the '059 patent. The court reserves judgment on claims 1-4 and plaintiff Componex's motion for infringement 36 as to the '059 patent pending submission of the parties' claims chart and, if necessary, respective explanations. Signed by District Judge William M. Conley on 7/18/2014. (arw)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
OPINION & ORDER
ELECTRONICS FOR IMAGING, INC.,
Plaintiff Componex Corporation alleges that defendant Electronics For Imaging,
Inc. (“EFI”), infringes two of its patents for printing technology. This opinion is limited
to claims relating to the U.S. Patent No. 6,113,059 (“the ‘059 patent”). As is common
in patent cases, the parties have filed cross-motions for summary judgment. Componex
seeks summary judgment of infringement.
EFI seeks summary judgment of non-
infringement. Validity is not at issue. As part of these motions, the parties also ask the
court to construe various terms expressed in the claims of the ‘059 patent. On July 16,
2014, the court held a hearing on claim construction and summary judgment on both
patents at issue in this case.
For the reasons that follow, the court will grant EFI’s
motion for summary judgment of non-infringement as to claims 5-22 and will reserve
judgment with respect to claims 1-4 pending the parties’ submission of a claims chart.
I. The Parties
Plaintiff Componex is a company located in Edgerton, Wisconsin, that
manufactures printing rollers, also known as “idler rollers.” As described in more detail
below, Componex manufactures and sells “dead shaft” idler rollers encompassed by one
or more claims of the ‘059 patent under the trademark “WINertia.” The President of
Componex, Cal Couillard, is the sole name inventor of the ‘059 patent. Couillard
assigned the ‘059 patent to Engineered Metals Corporation, which subsequently assigned
the ’059 patent to Componex.
Defendant EFI is a publicly-traded company that sells digital printers and printing
technology such as software. (Declaration of Peter Benoit (“Benoit Decl.”) (dkt.# 51) ¶
3.) Among the products EFI offers are several different models of its VUTEk Superwideformat printers. (Id.) VUTEk printers are used by specialty print shops to create highquality, large-format banners, posters and displays.
The VUTEk family of printers
integrate computerized solutions that optimize print production. The printers typically
consist of more than 3,000 parts. (Id.) A core component of these printers is the dead
shaft idler roller. (Id.)
II. Printing Roller Technology
Printing rollers are routinely used for what is known as “web handling,” i.e., the
transportation, shaping, and/or storage of thin materials — such as paper, foil, or rolled
metal — in a continuous and flexible form. (Declaration of Tim Walker (“Walker
Decl.”)(dkt.# 56) at ¶ 5.)
Central to the ‘059 patent are what are known as “idler
rollers.” An idler roller is a roller that rotates by traction, typically created by the moving
web as it is pulled or pushed under the roller itself. (Id. ¶ 6d.) Idler rollers can be
employed in web handling to, among other things, change web direction, prevent droop
or flutter, monitor average web tension and provide an applied force to bend the web for
guiding. Idler rollers are referred to as “live shaft” or “dead shaft.” A live shaft roller is
one where the shaft is fixed to and rotates with the roller, whereas a dead shaft roller is
one where the shaft (also known as the axis) does not rotate with the roller. (Id. ¶ 6b.)
Rollers can be balanced or unbalanced. Typically, rollers are balanced only in
applications requiring high printing speeds. (Id. ¶ 15.) When balancing is needed, it can
be done either by the addition of mass to the rotor, by the removal of material, or in
some cases by relocating the shaft axis (“mass centering”). Removal of mass can be
accomplished by, among other things, drilling, milling, or grinding. (Id. ¶ 20.)
III. The Claims of the ‘059 Patent and the Core of the Dispute
The ‘059 patent describes a dead shaft idler roller (i.e., a roller that rotates around
a nonmoving shaft or axle) composed in a single piece of two concentrically disposed
tubes connected with radial spokes instead of using a thicker single tube. (See, e.g., ‘059
Figure 1: An Embodiment of Invention from the ‘059 patent: Idler (54), Balancing Pins
(72) & Balancing Lug (32)
As illustrated above, the ‘059 patent teaches the inclusion of built-in balancing
lugs and balancing pins. These features can be removed or inserted after manufacture in
order to balance the roller and “eliminate the problem of weights rolling around loose
inside the idler” itself. (Id., 2:26-27.) Each of the independent claims in the ‘059 patent
require “balancing lugs”; many of the independent claims also require “balancing pins.”
(See, e.g., id. claims 1-4, 12-22.) Componex asserts infringement of claims 1-4 and 12-22
of the ‘059 patent. (Pl.’s Br. for Summ. J. (dkt.# 37) 8-9.)
Claim 1 of the patented invention states:
[A] A member suitable for an idler, comprising:
[B] a one-piece unitarily formed tube, wherein said tube comprises, an
outer elongate tube having a first outside surface and a first inside surface;
[C] an inner elongate tube having a second outside surface and a second
inside surface, wherein said inner elongate tube is concentrically disposed
within said outer elongate tube;
[D] a plurality of radially disposed and spaced apart spokes rigidly
interconnecting said inner elongate tube to said outer elongate tube;
[E] and a plurality of spaced apart balancing lugs having holding members
for receiving balancing pins, wherein said lugs are radially disposed about
said member between said outer elongate tube and said inner elongate tube;
[F] wherein no balancing lugs are disposed on said second inside surface of
said inner elongate tube.
‘059 patent, at 8:1-10. (emphasis added.)
With regard to the disputed terms, the parties’ preferred constructions are
summarized in the following table:
EFI Preferred Construction
Balancing structures which are intended to
balance the idler
structures dimensioned and
configured to retain a balancing
Balancing suitably substantially elongate and
cylindrical structures which are intended
to balance the idler
structures dimensioned and
configured to matingly engage
with the balancing lugs
EFI agrees with Componex that “holding
members” refers to the sub-part of a
balancing lug that mates with a balancing
pin and which is dimensioned and
configured to retain a balancing pin.
EFI agrees that the parties do not dispute
the meaning of “a distance apart” as used
in claims 12, 14, 15, 16, and 18-22.
The principal dispute between the parties is over the importance of the adjective
“balancing” with respect to an understanding of the terms “lugs” and “pins”. While EFI
contends that this adjective necessarily reflects the functional limitations underlined
above, Componex contends that the claims should be construed solely from a structural
perspective. More specifically, Componex argues that the specification in the ‘059 patent
uses the phrase “balancing lug” and the word “lug” synonymously —and that the court
should adopt a similar approach.
Analysis of patent infringement is a two-step process: “first, the scope of the
claims are determined as a matter of law, and second, the properly construed claims are
compared to the allegedly infringing device to determine, as a matter of fact, whether all
of the limitations of at least one claim are present, either literally or by a substantial
equivalent, in the accused device.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313,
1323 (Fed. Cir. 2002); Split Pivot, Inc. v. Trek Bicycle Corp., 12-CV-639-WMC, 2013 WL
6564640, at *2-3 (W.D. Wis. Dec. 13, 2013).
Claim terms “are examined through the viewing glass of a person skilled in the
art.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). This provides an
“objective baseline” from which to begin the claim analysis. Innova, Inc. v. Safari Water
Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). The inquiry is assessed at the
time of the invention, where the words of a claim “are generally given their ordinary and
customary meaning.” Phillips, 415 F.3d at 1313.
Because an “ordinary and customary” meaning may not be readily apparent, and
because “patentees frequently use terms idiosyncratically,” courts look to the patent
specification, the prosecution history, and pertinent extrinsic evidence to construe
disputed terms. Id. at 1314. Indeed, the specification is typically considered the “best
source for discerning the proper context of the claims.” Phillips, 415 F.3d at 1315; United
States v. Adams, 383 U.S. 39, 49 (1966) (it is “fundamental that claims are to be
construed in the light of the specification”); V-Formation, Inc. v. Benetton Group SpA, 401
F.3d 1307, 1310 (Fed. Cir.
2005) (the intrinsic record “usually provides the
technological and temporal context to enable the court to ascertain the meaning of the
claim to one of ordinary skill in the art at the time of the invention”).
A. The Claim Language
EFI contends that Componex’s preferred construction should be rejected because
it “seeks to wholly ignore” the word “balancing” in the terms “balancing lugs” and
“balancing pins.” (Def.’s Br. for Summ. J. (dkt.# 71) 10). (Id.) Not surprisingly, EFI
relies heavily on the “bedrock principle of claim construction . . . that the claims of a
patent define the invention to which the patentee is entitled the right to exclude.”
Phillips, 415 F.3d at 1312. The court is inclined to agree.
In drafting the patent, the patentee deliberately used the term “balancing” to
define the boundaries of the claims. Had the patentee intended something different, it
could have “prevented this result through clearer drafting.” See Miken Composites, L.L.C. v.
Wilson Sporting Goods Co., 515 F.3d 1331, 1337 (Fed.Cir. 2008). If it was truly meant to
have no meaning, the patentee could have deleted the term “balancing” from the claims
Even ignoring the term, as Componex seeks to do, would only create an
equally high hurdle for Componex, because it would broaden the scope of the patent
beyond what was claimed at the time of filing.1 Comaper Corp. V Antec, Inc., 596 F.3d
1343, 1348 (Fed. Cir. 2010); Innova, 381 F.3d 1111.
By not proposing an alternative construction that gives meaning to the term balancing,
Componex has limited its position.
B. The Specification
Componex’s argument fares no better when looking at the patent’s specification.
See Phillips 415 F.3d at 1316 (It is axiomatic that “[t]he construction that stays true to
the claim language and most naturally aligns with the patent’s description of the
invention will, in the end, be the correct construction”). The reason is two-fold.
First, an overriding objective of the ‘059 patent is to ensure that the idler is
balanced. This objective is drawn from the context of the specification, particularly the
background section of the patent.
See ‘059 patent, at 1:24-27.
There, the inventor
identifies problems that existed in the prior art. For example, without sufficient features
to secure the weights for balancing, the weights may roll loose, causing damage within the
idler itself. Id. The patent purports to address this problem by directing the skilled
addressee to novel features of the invention, i.e., “balancing lugs” and “balancing pins.”
These features are depicted in Figure 1 above, where the former accommodates the latter
to “eliminate the problem of weights rolling loose inside the idler.” Id.
accomplished by ensuring that the balancing pins are secured by the balancing lugs — a
functional advantage that would be readily appreciated by one skilled in the art. Id., at
Hence, the context reinforces EFI’s preferred construction. Indeed, without the
functional advantage stated in the specification, the adjective “balancing” in each of the
disputed terms, holds little (if any) significance. Although Componex argues otherwise,
claim terms must be assigned meaning. See Merck & Co. v. Teva Pharms. USA, Inc., 395
F.3d 1364, 1372 (Fed. Cir. 2005) (a claim construction that “gives meaning to all the
terms” is preferred over one that does not).
Because EFI’s position supplies meaning to
each of the disputed terms and best aligns with the specification, the court has little
trouble adopting the preferred construction. See Phillips, 415 F.3d at 1315; see also Bates v.
Coe, 98 U.S. 31, 38 (1878) (the specification aids in construing “the true intent and
meaning” of the claim language); Cross Med. Products, Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1306 (Fed. Cir. 2005) (looking to the body of the claim to understand
the purpose of the invention); Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., 401
F.3d 1367, 1372 (Fed. Cir. 2005)(claims should be construed to reflect the “overriding
purpose of the invention”); Innova, 381 F.3d at 1118 (finding that the term “[operatively
connected] is a general descriptive term frequently used in patent drafting to reflect a
functional relationship between claimed components.”).
Second, and further fortifying EFI’s position, are the teachings in the patent that
repeatedly refer to the function that is achieved when the balancing lugs and balancing pins
interact. Specifically, the inventor speaks of the “built-in balancing feature” achieved by
“a novel combination of physical features” in the invention. See ‘059 patent, at 3:65-67.
The specification underscores that the overriding purpose of the balancing lugs and
balancing pins are for balancing the idler:
To balance an idler made in accordance with the present invention, one or more
rods or pins are inserted into one or more balancing lugs . . . anywhere along the
full length of the idler body, thus providing a very fine tuning of the balancing of the idler
Id., at 6:45-55. (emphasis added). Reiterated later in the specification is the notion that
“[the] balancing lug feature of the idler . . . permits the idler to be completely set up with
the bearings in place, and then balanced.” Id., at 6:65-67. The repeated disclosures in the
specification are not easily ignored for purposes of construing the patent. The consistent
use of the term “balancing” with reference to “lugs” and “pins” leads to the conclusion
that the primary purpose of the lugs and pins are for balancing the idler.
particularly true when no other function for these features is described in the
specification. See, e.g., Nystrom v. TREX Co., 424 F.3d 1136, 1144 (Fed. Cir. 2005)
(consistency of language in specification is an acceptable basis for claim construction).
Here, the repeated teachings in the patent provide a frame of reference from which
the skilled addressee would construe the claims. Indeed, the context informs the meaning
of the disputed terms by linking the adjective “balancing” in the claims to the elimination
of the balancing problems identified in the background section of the patent.
congruency further supports the adoption of EFI’s preferred construction of the disputed
terms: balancing lugs and balancing pins are structures built for balancing the idler. See
Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1333 (Fed. Cir. 2009) (where the
inventors “disparaged prior art in their ‘background art’ section of the specification,” they
thereby inform the construction of the term wires); Phillips, 415 F.3d at 1313 (“In most
cases, the best source for discerning the proper context of claim terms is the patent
specification wherein the patent applicant describes the invention”).2
See also Innovad, Inc. v. Microsoft Corp., 260 F.3d 1326-1333 (Fed. Cir. 2001)(rejecting the lower
court’s construction and focusing instead on the fact that the specification equated the dialer’s
size with its function: “[t]he dialer unit has no keypad, it is much smaller than existing repertory
dialers and thus more portable and suitable for specialty advertising purposes”).
C. The Prosecution History & Prior Art
The prosecution history also squares with the claims language and specification.
In order to distinguish the invention from prior art, Componex argued to the Patent
Office that the “balancing lug” is “a structure which is intended to balance the idler,”
which appears directly at odds with the construction it now proffers to this court.3 For
the reasons that follow, Componex will be bound by its prior representations. See Ballard
Medical Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1359 (Fed. Cir. 2001) (“An
inventor may use the specification and prosecution history to define what his invention is
and what it is not — particularly when distinguishing the invention over prior art”);
Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1379-80 (Fed. Cir. 1998) (“[b]y
distinguishing the claimed invention over the prior art, an applicant is indicating what
the claims do not cover”); Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed.
Cir. 1998) (pointing to “[n]otice [as] an important function of the patent prosecution
process, as reflected by the [patent] statute itself”).
As is often the case, Componex achieved allowance of the claims in the ‘059
patent, including the disputed terms, only after three prior rejections by the Patent
Office. In seeking to traverse one office action, Componex distinguished U.S. Patent No.
4,425,694 (the “Somerville” reference) on grounds that it did not teach a less intensive
In particular, Componex represented to the Patent Office that the
balancing problem was first addressed by its invention, which provided a built-in feature
The inventor, Couillard, assigned the ‘059 patent to Engineered Metals Corporation, which
subsequently assigned the ‘059 patent to Componex. While Componex was not, therefore, the
original patentee, it will be referred to as “patentee” for sake of simplicity.
that included “balancing lugs accommodating balancing pins in mating fashion.” (Walker
Decl. Ex. B (dkt.#56-2) 97-99.)
Even with this representation, the examiner was not convinced and rejected the
claims in light of prior art.
Componex then made an even more
definitive argument in an attempt to distinguish the invention and traverse the
examiner’s rejection. In restating its position, Componex declared: “Clearly the Applicant
has defined the term ‘balancing lug’ in the specification to be a structure which is intended
to balance the idler.” (Id., at 131 (emphasis added).) This declaration was also supported
by arguments to distinguish the invention from the prior art. The following statements
with respect to U.S. Patent No. 3,3889,715 (the “Lilja” reference) and U.S. Patent No.
4,737,046 (the “Inabata” reference) are illustrative:
As generally understood, claims are to be interpreted in light of the specification.
Certainly, the forks of Lilja are not intended to balance the pipes disclosed therein
which are for enclosing pipe insulation, nor are the fins of Inabata intended to
balance the platen rolls as described therein.
(Id.) Once these declarations were submitted, the claims were then allowed and the
Componex contended at oral argument that none of these declarations to the
Patent Office are relevant to construction of the claims because they related to earlier
claims that were later cancelled. As EFI pointed out at oral argument and in earlier
briefing, however, that argument carries little weight. (See Def.’s Br. for Summ. J. (dkt.#
93) 23-24.). Most fundamentally, the earlier claims were not cancelled.
“claims 1,2,4, and 10 were simply rewritten as claims 28-31” (claim 28 being the claim
that was later renumbered to claim 1). (Walker Decl. Ex. B (dkt.#56-2) 136.) Moreover,
the whole point of prosecution history estoppel is to prevent what Componex is seeking
to do here: ignore the actual context in which the prosecutor and the examiner used the
terms that were later reduced to the language of the issued patent. Digital Biometrics, Inc.,
149 F.3d at 1347.
Here, the terms “balancing lugs” and “balancing pins” were consistently used
throughout correspondence between the patentee and the examiner, and were understood
to have functional limitations. While there was chopping and changing of some claim
language, the term “balancing lugs” remained constant throughout. It was never deleted
from the patent.
Indeed, once functional meaning was attributed to the term (to
distinguish the invention from prior art) the balancing lugs became a core aspect of the
invention. This is only reinforced by the repetition of the same terms in each and every
claim of the patent. And contrary to Componex’s position, there is also nothing in the
claims, specification or prosecution history to suggest that the term “balancing lugs”
should be given meaning other than the functional definition that the court adopts in this
case. See Phillips, 415 F.3d at 1314 (“claim terms are normally used consistently
throughout the patent”). Thus, even if not a basis for prosecutorial estoppel, the
prosecution history is wholly consistent with the court’s claim construction.
In this respect, Componex’s position is no different than the patentees in Ballard
and Spectrum. In those cases, the Federal Circuit identified inconsistencies between what
was stated before the Patent Office for the purpose of obtaining a patent and what was
stated before the court for the purpose of claim construction. In both instances, the
Federal Circuit held the applicants to their prior statements before the Patent Office. See
Ballard, 268 F.3d at 1359; Spectrum, 164 F.3d at 1379-80.
So, too, here: a clear
disavowal of claim scope which is grounded in the prosecution history of the ‘059 patent
Accordingly, the court finds that the definition of balancing lug, made in order to
traverse rejections by the patent examiner and avoid prior art, cannot now be abandoned
by Componex in order to expand the scope of its patent beyond what was previously
claimed. To do so would not only turn Componex’s position before the Patent Office on
its head, it would distort the public notice function of the prosecution process that the
statute seeks to preserve. See Phillips, 415 F.3d at 1315; see also Kinik Co. v. Int'l Trade
Comm'n, 362 F.3d 1359, 1365 (Fed. Cir. 2004) (“The words of patent claims have the
meaning and scope with which they are used in the specification and the prosecution
D. The Extrinsic Evidence
Finally, the court finds that extrinsic evidence further supports EFI’s position,
especially when read in light of the intrinsic record as set forth above. Extrinsic evidence
consists of all evidence external to the patent, including inventor testimony, dictionaries,
and learned treatises. Phillips 415 F.3d at 1317. This evidence may be helpful to explain
scientific principles, the meaning of technical terms, and terms of art that appear in the
patent and prosecution history. Id. Extrinsic evidence may also demonstrate the state of
the prior art at the time of the invention to “aid the court in construction of the patent.”
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (quoting Brown
v. Piper, 91 U.S. 37, 41, 23 L.Ed. 200 (1875)).
While extrinsic evidence is not dispositive of the court’s construction, it serves to
underscore the flaws in Componex’s preferred construction here. This is borne out by
statements of the inventor, who confirmed during deposition testimony that the purpose
of the balancing lugs in the invention is “to balance the rolls [i.e., the idlers].” (Couillard
Dep. 51:18-20, attached to Labar Decl. as Ex. 2.) The inventor further opined that the
presence of such balancing lugs is the key distinction between the invention and preexisting idlers in the prior art. (Id. 97:21-98:5.)
This extrinsic evidence — drawn directly
from the inventor — distinguishes the “old” subject matter from the “new” subject matter
“to aid the court in the construction of the patent.” Markman, 52 F.3d at 979. Tellingly,
it also confirms the conclusion that the sole purpose of the balancing lugs is to balance
the idler, thereby preventing loose weights from rolling around inside the idler as
identified in the prior art.4
In Curtiss-Wright Flow Control Corp. v. Z & J Technologies GmbH, 563 F. Supp. 2d 1109, 1117
(C.D. Cal. 2007), U.S. District Judge Otero reiterated that claim construction is a purely legal
determination even when extrinsic evidence is relevant to claim construction, stating:
According to the Federal Circuit, extrinsic evidence is only used for the Court’s
understanding of the patent. Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1455
(Fed.Cir.1998) (en banc). When the Court construes the true meaning of the claims with
the aid of extrinsic evidence, according to the Federal Circuit, the Court is not making
factual findings or crediting certain evidence over other evidence. According to the Federal
Circuit, while the trial judge may seek understanding outside the patent proper, from
relevant texts and materials, and from experts in the art, none of this involves ‘factfinding’ in the sense of the traditional fact-law dichotomy.
Whether this will continue to be good law remains to be seen when the Supreme Court
reconsiders Cybor’s holding in Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., 723 F.3d 1363, 1369
(Fed. Cir. 2013), cert. granted, No. 13–854, 2014 WL 199529 (U.S. Mar. 31, 2014). Cf. Lighting
Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272, 1282-83 (Fed. Cir. 2014).
E. Functional v. Structural Claims
Notwithstanding the need to supply meaning to the adjective “balancing” — or
the fact that the specification, prosecution history and extrinsic evidence all cut against
its position — Componex still contends that the court cannot adopt a functional
interpretation because the claims in the patent are worded in structural terms.
Specifically, Componex contends that because claims 1-4, 13, 17, 19, 21 and 22 are
directed towards “apparatus” claims, EFI’s construction impermissibly injects a use
limitation into claims written in structural terms. (Pl.’s Opp Br. (dkt.# 75) 24-25.) Indeed,
this was the focus of Componex’s oral argument with respect to the ‘059 patent.
On first blush, Componex’s argument would seem to have some merit. See Paragon
Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir. 2009) (“absent an express
limitation to the contrary, any use of a device that meets all of the limitations of an
apparatus claim written in structural terms infringes that apparatus claim”); Catalina
Marketing International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
(same). On closer inspection, however, the argument fails for a variety of reasons. As an
initial matter, the proposition in Paragon does not apply where, as here, statements of
intended use exist in the record and “the applicant clearly and unmistakably relied on those
uses or benefits to distinguish prior art.” Catalina, 289 F.3d at 808.
completely ignores this aspect of both the Paragon and Catalina decisions.
In so doing, Componex not only ignores the context supplied by the specification,
which is tethered to the claims themselves, but would circumvent the entire prosecution
Fortunately, the result does not change here whatever the ultimate holding in Teva, since the
extrinsic evidence points overwhelmingly to the same construction.
history. Both sources provide evidence that distinguishes the invention from the prior
art. While addressed earlier in this opinion, an additional representation to the patent
examiner is illustrative:
As noted in the subject specification, the balancing lugs are used for holding balancing pins
so that the tubing material can be balanced without the problem of weights rolling around
loose inside the idler. [Neither] Lilja et al. nor Skegin make any reference to using balancing
lugs to balance an idler. The forks of Lilja et al. enable outer portions to be
removably attached to the pipe. Certainly, the forks of Lilja et al. cannot be
considered the same as the claimed balancing lugs because the forks could not
hold balancing pins as taught by the subject application. With reference to Skegin,
the channel sections and plates interlock by means of mating longitudinal bosses.
Certainly, the bosses projecting from the inside surface near cannot be considered
the same as the claimed balancing lugs . . . as taught by the application.
(Walker Decl. Ex. B (dkt.#56-2) 116)(emphasis added).
These kinds of detailed responses to the Patent Office reveal the specific
boundaries that Componex voluntarily carved out from the prior art to obtain the ‘059
patent. In particular, the first sentence of the passage highlights the problems of weights
rolling around loose inside the idler. The patentee then states that the Lilja and Skegin
references do not use balancing lugs and balancing pins to balance an idler. In Catalina’s
language, these statements are “clearly and unmistakably” relied upon to distinguish the
“uses or benefits” of these features over the prior art. 289 F.3d at 808.
The present case is analogous to DeSena v. Beekley Corp., 729 F. Supp. 2d 375 (D.
Me. 2010). In DeSena, the functional limitation at issue related to X-ray markers “used”
for podiatry purposes. The district court held that because of efforts by the patentee to
distinguish the patent from the prior art in both the specification and the prosecution
history, the patent office adopted the construction subsequently advocated by the
accused infringer. Id. at 381-84.
Here, too, the patentee went to great lengths to define the boundaries of the
patent relative to the prior art, thereby narrowing the scope of the patent to avoid
invalidity. Because of this, the court has little choice but to cabin even the so-called
structural claims with this functional limitation consistent with the prosecution history
and the patent’s specification.5
Any construction other than this would not only be
inconsistent with the purpose of the patent, but would distort how a person of ordinary
skill in the art would understand the invention in light of the prior art. Id.; accord Bass Pro
Trademarks, LLC v. Cabela’s, Inc., 485 F.3d 1364, 1369 (Fed. Cir. 2007) (“Throughout the
prosecution, the applicant relied on the vest to distinguish the combination from the
devices in the references.”); see also Purdue Pharma L.P. v. Endo Pharm. Inc., 438 F.3d
1123, 1136 (Fed. Cir. 2006) (“Under the doctrine of prosecution disclaimer, a patentee
may limit the meaning of a claim term by making a clear and unmistakable disavowal of
scope during prosecution. This may occur, for example, when the patentee explicitly
characterizes an aspect of his invention in a specific manner to overcome prior art.”).6
Because of these statements, and because the Patent Office relied on the statements to allow for
issuance of the patent, the public notice concerns raised in Paragon are not relevant in this case.
Componex also argues that prior to the final claim-set being issued, the Patent Office deleted the
phrase, “intended to balance the idler” from claims 1-4. Componex contends that because this
phrase was removed” from claim 1, it should have no bearing on how the phrase “balancing lugs”
should be construed. Componex accuses EFI of not providing this aspect of the prosecution
history, which sheds light on the issue of balancing. But in levelling this allegation against EFI,
Componex ignores its similar failings. At page 149 of the prosecution history, the patent attorney
for Componex notes that the phrase (“intended to balance the idler”) has been deleted from claim
1. (Walker Decl. Ex. B (dkt.#56-2) 149.) In that same correspondence, the patent attorney
expressly states that the deletion has “no bearing on the [allow ability] of the claim” and that the
“deletion of the functional language has no effect on the Examiner's stated reasons for allowance.”
(Id.) Accordingly, he concludes, “[t]he foregoing changes do not substantively affect the scope of
the allowed claims and merely address procedural matters to put the claims in better condition for
issuance.” (Id.) At a minimum, this correspondence neutralizes Componex’s argument that EFI
While the court has adopted EFI’s construction, it will only grant EFI’s motion for
summary judgment of non-infringement with respect to claims 5-22 based both on: (1)
the absence in the factual record of use of balancing pins by EFI, except for idlers sold to
it by Componex; and (2) as confirmed at the hearing held on July 16, 2014, the fact that
balancing pins are required for each of those claims.7 At this juncture, the court will
reserve judgment with respect to claims 1-4 until after the filing of the parties’ chart
listing the claims and products that remain at issue. (Dkt #15 at 4.)
If the parties cannot file a joint chart after making a good faith effort to do so, the
court will accept two separate documents of the areas in dispute with a very brief
explanation and citations to the factual record supporting their respective positions.
used the prosecution selectively. Moreover, while the claims did “chop and change” during the
course of the prosecution history, the correspondence between the Patent Office and the patent
attorney centered on the issue of the balancing lugs and whether that feature should be read
narrowly in light of the prior art (i.e., with a functional limitation to balance the idler). Given that
phrase “balancing lugs” was not deleted, and was defined in functional terms in the prosecution
history to distinguish prior art, the patentee will be held to its statements made before the Patent
Office. See discussion, supra.
EFI’s motion is granted as to both literal infringement and infringement under the doctrine of
equivalents. See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2012) (“If no
reasonable jury could find equivalence, then the court must grant summary judgment of no
infringement under the doctrine of equivalents.”). As to claims 5-22, Componex cannot prevail under
either theory. Not only did Componex fail to (1) rebut EFI’s motion, which sought summary
judgment on both literal and equivalency theories, but it (2) failed to offer any evidence with respect
to EFI’s use of balancing pins or an arguable equivalent to pins. With respect to the second point,
EFI’s failure to argue features that were similar to pins precludes an equivalents theory because of
claim vitiation. Id. at 1356-57 (vitiation applies when “the evidence is such that no reasonable jury
could determine two elements to be equivalent.”).
IT IS ORDERED that:
1. Defendant EFI’s construction of the disputed terms, as described in this
opinion, are adopted by the court.
2. Defendant EFI’s motion for non-infringement (dkt. 41) is GRANTED
with respect to claims 5-22 as to the ‘059 patent.
3. The court reserves judgment on claims 1-4 and plaintiff Componex’s
motion for infringement (dkt 36) as to the ‘059 patent pending
submission of the parties’ claims chart and, if necessary, respective
Entered this 18th day of July, 2014.
BY THE COURT:
WILLIAM M. CONLEY
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