Monroe Truck Equipment, Inc. v. Universal Truck Equipment, Inc.
Filing
211
ORDER granting in part and denying in part 194 Motion for Reconsideration of Claim Construction Issues re: 192 Order on Motion for Summary Judgment. Signed by District Judge James D. Peterson on 8/7/2015. (arw)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
MONROE TRUCK EQUIPMENT, INC.,
ORDER
Plaintiff,
v.
14-cv-49-jdp
UNIVERSAL TRUCK EQUIPMENT, INC.,
Defendant.
Defendant, Universal Truck Equipment, Inc., has moved for clarification and
reconsideration of the court’s Opinion and Order granting summary judgment. Dkt. 194. The
court will grant this motion in part to clarify its construction of “trailing link.” But the court
will not reconsider its grant of summary judgment, and the motion is thus otherwise denied.
A. Clarification
As the Opinion and Order said, “The court will adopt plaintiff’s construction.”
Dkt. 192, at 9. Plaintiff had proposed the following construction:
A connecting structure configured to extend at least partly
behind an anchor point in order to transmit pulling force in a
direction extending at least partly behind the anchor point.
Dkt. 74, at 16. Defendant, in its motion for clarification, contends that the court did not
analyze the part of this construction concerning the transmission of pulling force or the
direction of that pulling force. According to defendant, “such analysis was necessary to
support the grant of summary judgment.” Dkt. 195, at 2.
The court analyzes the issues that are presented to it. Defendant’s claim construction
argument was directed nearly exclusively to the question of the position of the trailing links.
See Dkt. 41, at 4-9. Defendant mentioned the pulling force issue in a few scant sentences. See
Dkt. 64, at 5; Dkt. 79, at 3. If this aspect of plaintiff’s proposed construction mattered to a
contested issue, defendant should have developed that argument in its summary judgment
briefs. Even now, defendant does not show how this aspect of plaintiff’s claim construction
would affect the court’s decision on infringement or validity. Nevertheless, the court will
provide the requested clarification.
The concepts of the “anchor point” and “pulling force” are basic ideas that are implicit
in the claimed invention. The court addressed the pulling force concept in the background
section and in the discussion of invalidity. The “trailing link” is fundamentally a structural
element, whereas the language “in order to transmit pulling force in a direction extending at
least partly behind the anchor point” is essentially functional. The court concludes that the
functional language is superfluous as part of the construction of “trailing link.” A functional
limitation is provided elsewhere in the claims, in sub-paragraph E. Accordingly, the court will
construe “trailing link” as follows:
A connecting structure configured to extend at least partly
behind the point at which that connecting structure is secured to
a plate.
This clarification of the court’s construction of “trailing link” does not change the outcome of
this case.
B. Statement in the specification
Defendant contends that the court failed to consider an express statement of
limitation in the specification. Specifically, defendant points to the following:
The present invention overcomes the aforementioned [diving]
problem by providing a trailing link mechanism such that the
inboard end and/or the outboard end of the wing plow is
supported by a support arm which in turn is supported by
trailing links rather than the prior art laterally extending links.
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’376 patent, at 1:40-45. Defendant contends that because this is a description of “the present
invention,” the court must regard it as a statement that limits the scope of the claimed
invention. This statement does not provide a basis for reconsideration of the court’s order for
several reasons.
As a preliminary matter, is it worth clarifying two points of law. First, defendant
contends that statements in the specification are not subject to the same rigorous disavowal
rules that apply to statements made during the prosecution history. Defendant cites no
authority for this proposition, and it is wrong. Any expression that would limit the plain
language of the claims must be clearly expressed, regardless of whether that putative
limitation is in the prosecution history or the specification. Hill-Rom Servs., Inc. v. Stryker
Corp., 755 F.3d 1367, 1371-72 (Fed. Cir.), cert. denied, 135 S. Ct. 719, (2014) (“Disavowal
requires that the specification or prosecution history make clear that the invention does not
include a particular feature.” (internal quotation and punctuation omitted)).
A second point of clarification. Not every statement invoking the phrase “the present
invention” should be taken as an expression of the inventor’s intent to limit the scope of his
invention. If the specification, read fairly and as a whole, limits the invention in some way, a
statement concerning “the present invention” is properly used to construe the claims,
sometimes more narrowly than the claim language might otherwise suggest. A case cited by
defendant, Verizon Services Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir.
2007), provides a good example. But contrary to defendant’s suggestion, there is no uniform
rule that every reference to “the present invention” should be read as a limitation of the
scope of the invention. Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1136 (Fed.
3
Cir. 2011) (citing cases). Statements about “the present invention” have to be read in the full
context of the specification.
Finally, the court turns to the statement in the specification cited in defendant’s
motion for reconsideration. The question of how the patentees distinguished the lateral links
in the prior art was fully addressed by the court in the context of defendant’s prosecution
history argument. Dkt. 192, at 11-12. The same analysis applies with even greater force to
this statement in the specification: the patentees’ statements that distinguish the prior art do
not rule out trailing links that extend back at an angle.1 The statement that defendant points
to as limiting trailing links to those that extend straight back simply does not express any
intent to deviate from the claim language, which describes the trailing concept in terms of the
relationship of the pivotal axes.
C. New evidence
Defendant would also like to adduce new evidence in support of its claim construction
argument, particularly an engineering drawing of a Monroe Truck product, submitted to the
Patent Office in connection with U.S. Patent Application No. 14/069,800 on December 17,
2014. This is not a basis for reconsideration. Defendant contends that this response was filed
after defendant moved for summary judgment. But defendant has not shown any justification
for not discovering and presenting this evidence to the court in response to plaintiff’s motion
for summary judgment.
1
Defendant contends that the reference to “prior art” in the specification of the ’376 patent
would include an engineering drawing of an older Monroe Truck Equipment product that
was submitted to the Patent Office on December 17, 2014, in connection with a
continuation application. The ’376 patent issued on December 3, 2013. Despite the fact that
Monroe Truck Equipment may have designed that product in 2009, defendants cannot
plausibly argue that a reference to “prior art” during the prosecution of the ’376 patent would
include art that had not yet been submitted to the Patent Office.
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Defendant contends that it was not aware of the significance of the December 17,
2014, office action response until its patent attorney (not litigation counsel) got a copy of the
engineering drawing on July 29, 2015, from the Patent Office in Virginia. But defendant’s
litigation counsel could have gotten the prosecution history of the U.S. Patent Application
No. 14/069,800 directly from plaintiff through discovery. And indeed defendant concedes
that had a copy of the engineering drawing with handwritten annotations on it. The failure of
defendant’s litigation counsel to appreciate the significance of this drawing provides no basis
for this court to reconsider its summary judgment ruling.
D. Indefiniteness
Defendant also contends that the court’s construction of “avoid” renders the asserted
claims invalid as indefinite. The court’s construction of “avoid” is substantively the same as
the one proposed by plaintiff, though phrased somewhat more simply. Defendant cannot
legitimately claim surprise at the court’s construction. Defendant might have an argument for
indefiniteness based on this functional claim limitation. But defendant has waived any
challenge to the validity of the asserted claims on the basis of indefiniteness because
defendant did not to respond to plaintiff’s motion for summary judgment on this precise point.
Dkt. 74, at 92-95; Dkt. 192, at 21.
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ORDER
IT IS ORDERED that defendant’s motion, Dkt. 194, is GRANTED in part and
DENIED in part, as provided above.
Entered August 7, 2015.
BY THE COURT:
/s/
________________________________________
JAMES D. PETERSON
District Judge
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