Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Wells-Gardner Elecs. Corp. v. C. Ceronix, Inc., No. 10 C 2536, Slip Op. (N.D. Ill. Apr. 14, 2011) (Hart, J.).

Judge Hart construed the term "flange" and granted defendant C. Ceronix summary judgment of noninfringement in this patent case involving flat panel television mounting frames. The Court held that "flange" as used in the claims was interchangeable with "bracket," which C. Ceronix argued should be excluded from the definition of flange. In addition to the intrinsic evidence, the Court looked to dictionary definitions of flange.

C. Ceronix had brackets on the sides of the frame, but the brackets did not directly attach to the sides of the flat panel display as required by the claim. Instead the bracket attached at the back of the display. The doctrine of equivalents did not apply because allowing a flange that attached at the back not the side would vitiate the claim element.

The Court exercised its discretion to dismiss C. Ceronix's claim for declaratory judgment of invalidity.
 

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Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Apr. 12, 2011) (St. Eve, J.).

Judge St. Eve granted defendant Hearthware's motion for reconsideration holding that the claim term cooking enclosure required no construction. The Court originally construed "cooking enclosure" to mean "an oven housing and a metallic oven pan supported by a base." The Court held that the instruction imported a claim limitation. Furthermore, the doctrine of claim differentiation required broader constructions because other independent claims that further defined the cooking enclosure as having a metallic oven pan as a base were made superfluous by the original construction.

The Court also held that Hearthware's motion should have been brought pursuant to Fed. R. Civ. P. 54(b) which gives the Court authority to reconsider its interlocutory decisions, not Rule 59(e) which only applies once the Court has entered judgment.
 

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Late Allergen Reduction, LLC v. Dynarex Corp., No. 10 C 129, Slip Op. (N.D. Ill. Apr. 21, 2011) (Bucklo, J.).

Judge Bucklo construed the claims in this patent infringement case involving a method of neutralizing protein allergens found in natural rubber latex. Here are constructions of note:

• "The protein allergens" was construed to require that the method degrade all of the protein allergens in the latex, not just one or more protein allergens.
   
• "Non-allergenic to humans" was construed as "the protein allergens contained within the natural rubber latex are degraded such that the natural rubber latex is incapable of producing an allergic reaction in any human . . . ." Plaintiff's proposed construction requiring greatly reduced levels of allergens to "most humans" would render the claims indefinite.
   
• "Non-transmissive" was construed as "an optical structure that reduces the transmission of radiant light to the greatest degree practicable consistent with the intended purpose."
   
• "A protease enzyme and a peptidase enzyme" was construed as requiring two separate enzymes, one being a protease and the other being a peptidase. It could not be a single enzyme of both types.

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Minemyer v. B-Roc Reps., Inc., No. 07 C 1763, Slip Op. (N.D. Ill. Mar. 22, 2011) (Cole, Mag. J.).

Judge Cole denied defendants' summary judgment of noninfringement. The motion was premised upon an effort to amend the construction of "approximately perpendicular" which the parties previously agrees was "approximately ninety degrees" to no more than five degrees away from a ninety-degree angle. Defendants' accused couplers had threads at an eighty degree angle - ten degrees away from ninety degrees. But the parties had already cancelled their claim construction process because they agreed upon all constructions, including that approximately perpendicular meant approximately ninety degrees." Even if the arguments were timely, and not a "back door" attempt to avoid the Court's schedule, defendants' evidence did not support their construction:

• The inventor's testimony suggested ten degrees did not meet the "approximate" modifier. But the inventor's testimony is heavily discounted if not disregarded, in claim construction.
   
• The parties experts also opined that ten percent was outside "approximate." But that was evidence for the trier of fact to weight in considering infringement.
   
• The examiner's use of "perpendicular" without the "approximately" modifier was irrelevant because the allowed claim contains the modifier.

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Morningware, Inc. v. Hearthware Home Prods., Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Feb. 23, 2011) (St. Eve, J.).

Judge St. Eve construed the the claims of counter-plaintiff Hearthware's patent involving halogen convection ovens. Of particular note, the Court construed the following terms:

• "A cooking enclosure" means "an oven housing and a metallic oven pan supported by a base." This definition fit with the language of the abstract and the summary of the invention.
   
• "A fan" means "one or more fans." The Court declined Morningware's argument that fan be limited to the fan described in the preferred embodiment.
   
• "A fan chamber" means "one or more enclosed spaces, through which a fan moves air, that are in the power head and above both the cooking enclosure and the heating unit." The Court held that a more particular definition proposed by Morningware would require improper importation of limitations into the claims from the specification.

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Civix-DDI, LLC v. Hotels.com, No. 05 C 6869, Slip Op. (N.D. Ill. Oct. 25, 2010) (St. Eve, J.).

Judge St. Eve construed the terms of the patents-in-suit to internet technology. From a procedural standpoint, the Court did the parties and readers of the opinion the favor of identifying the Court's construction in a bulleted list at the beginning of the opinion, as well as at the end. Lists of the construed terms and their construction opinions make claim constructions far more readable.

Of particular note, the Court construed the following terms:

• "Associated category" means "a classification both stored in the database and provided or selected by a user that divides particular items of interest into subgroups." The Court gave "little weight" to a construction from a prior case which the parties in that case stipulated to because defendants in this case were not parties to that case, nor did they have privity with the prior defendants.
   
• "Connected to" means "joined together or linked to, in a direct or indirect manner." Because neither the claim language nor the specification exclude an indirect connection, the construction included both direct and indirect connections.
   
• "Database" means "a collection of related information organized for convenient access." The Court accepted the construction from the prior case because it was supported by the intrinsic evidence. Nothing in the claims or specifications required a single device as proposed by defendants.
   
• "Internet" means "a system of linked computer networks, worldwide in scope, that is typically associated with using TCP/IP as a standard protocol." This was the Court's construction from the prior case, but it was reached after a de novo review of the construction and all relevant evidence. Additionally, "Internet" and "internet" were construed to mean the same thing.
   
• "User" means "a human being."
   
• "Video" means "a presentation of multiple sequential frames of image data." The construction was intended to create a distinction between digital pictures and video.
   
• "Within a radius about the one port" means "within a circular area the center of which is the user's present physical location."

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The Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, Slip Op. (N.D. Ill. Nov. 24, 2010) (St. Eve, J.).

Judge St. Eve ruled on the parties' numerous summary judgment motions in this patent case involving garage door opener remote control technology.* The Court first addressed the controlling claim constructions. Judge Moran previously construed the claim terms, but on appeal those constructions were amended by the Federal Circuit. Plaintiffs argued that the Federal Circuit's constructions were not binding and were open to further construction. But the Court held that the Federal Circuit's constructions were the law of the case and were binding upon the parties. Because plaintiffs' arguments for summary judgment of infringement were premised upon its own claim constructions, and not the Federal Circuit's constructions, those motions were denied.

Next the Court considered whether there was a question of fact that the accused devices used "binary code" as required by the patents. The parties agreed that an absence of binary code would require a finding of noninfringement. But the parties disputed whether defendant Lear's accused products used binary code. Ultimately the battle of the parties' experts created a question of material fact precluding summary judgment of either infringement or noninfringement.

The Court granted plaintiffs summary judgment as to Lear's argument that the asserted claims were not directed to patentable subject matter. Lear argued that plaintiffs' claims simply covered algorithms, but the cases were directed to devices that were by definition not just algorithms.

Plaintiffs were also granted summary judgment as to Lear's claim that plaintiff's committed inequitable conduct by failing to disclose a particular patent to the Patent Office as prior art. Plaintiffs had provided the art to a prior examiner, in a parent application. Once a patent applicant submits prior art in a parent application, that art is considered disclosed in any progeny applications.

* Click here for much more on the case in the Blog's archives.
 

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Tanita Corp. v. Homedics-U.S.A, Inc., No. 08 C 7145, Slip Op. (N.D. Ill. Nov. 4, 2010) (Holderman, C.J.).

Judge Holderman construed the claims of plaintiff's patent to a scale for measuring a person's weight with a platform that had a clear outer layer so that instructions or warnings could be placed on the inner layer, but still be read by the user through the transparent outer layer. Of particular note, the Court construed the following terms:

• "Doughnut-shaped" meant a circular shape with a circular-type enclosed center opening." Plaintiff Tanita's argument that it could be any shape with a center opening was not supported by the patent or dictionary definitions, which identified doughnuts as ring-like.
   
• The claim's preamble was limiting because it stated the purpose or use of the invention and recited an essential part of its structure, a built-in weight meter.
   

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Only the First, Ltd. v. Seiko Epson Corp., No. 07 C 1333 & 09 C 4655, Slip Op. (N.D. Ill. Sep. 29, 2010) (Dow, J.).

Judge Dow construed the claims of plaintiff's patent covering a color printing system, and granted in part defendant's motion for summary judgment of indefiniteness. Of particular note, the Court construed the following terms:

• The Court, by agreement, construed the base colors - violet, blue, green, yellow, orange and red - using the same wavelengths the Court used in construing a related patent earlier in the case -- click here for that opinion in the Blog's archives.
   
• As in the prior constructions, the Court held that the components of component colors (e.g., red and orange for orange-red) must have the highest intensity of all the components. Otherwise, a color ordered red, orange, blue and violet could be both orange-red and violet-blue, a nonsensical result.
   
• The Court held that the patentee gave "intensity" the same "unconventional" meaning -- a synonym for "quantity" -- as in the prior constructions because the two patents share a specification and the claims did not define the term differently.
   
• The Court held that the term "peak reflectance percentage" used in claims 7 and 9 was not supported by the specification and, therefore, those claims were invalid because they contained new matter. While a new matter determination is a question of fact, no reasonable jury could find support for peak reflectance percentage in the specification, warranting summary judgment.
   
• "Peak intensity" and "dominant intensity" were both indefinite. Pursuant to the Court's construction of intensity, each color can only have a single intensity, rendering peak and dominant intensities nonsensical.
   
• The terms "cyan," "magenta," and "yellow" were indefinite to the extent that they were amenable to multiple constructions. The Court, however, used the narrowest possible constructions as follows: "cyan" was "green-blue"; "magenta" was "violet-red"; and "yellow" was "orange-yellow" or "green-yellow."
   
• "Each of a different color" was not indefinite. Color referred to the six claimed colors, as well as black and white. Shades of a color were not "different."

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Viskase Cos., Inc. v. World Pac Int'l AG, No. 09 C 5022, Slip Op. (N.D. Ill. May 18, 2010) (Bucklo, J.).

Judge Bucklo construed the claims in this patent case regarding food curing technologies for use in packing sausages and other processed foods. The following construction were of particular note:

• The Court declined to construe "barrier casing" holding that "barrier" did not require construction beyond its ordinary meaning. The parties real dispute was over the term "impermeable" which the Court construed.

• The Court construed "impermeable" as "having a low enough permeability or transmission rate to steam and/or gas to prevent a measurable loss of weight, flavor, and taste during customary production, cooking, and storage." This construction required a lower permeability than any known in the industry because that is how the patentee defined impermeable in the specification noting that courts cannot redraft claims to avoid "nonsensical results."

• "Plastic Foils" was construed as "a self-supporting film or sheet of plastic." Because the patent contemplated laminating the plastic foil, it has to be self-supporting because only self-supporting foils can be laminated.

• The Court held that "woven" in "woven fibers, fabric, knits and fleece" modified only fibers, not fabric, knits or fleece.

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Bone Care Int’l, LLC v. Pentech Pharma., Inc., No. 08 C 1083, Slip Op. (N.D. Ill. June 4, 2010) (Dow. J.)

Judge Dow construed the claims in this patent infringement action related to methods for preventing bone mass loss using vitamin D. As an initial matter, the Court held that the person of ordinary skill in the court was someone in the field of kidney disease with either a Ph.D. or an M.D., adopting plaintiffs’ construction. Defendants’ argued that both a Ph.D. and an M.D. were required, but the parties agreed that the definition did not impact their respective arguments. Of particular interest, the Court construed the following terms:

• The Court declined to construe “lowering” or “lowered” because the parties did not contest that the constructions impacted claim scope, and their ordinary meanings were sufficient.
   
• “Serum parathyroid hormone” was construed as “blood concentrations of parathyroid hormone.”
   
• “Suffer from” was construed as “having” consistent with its ordinary meaning. The dictionary drew a distinction between suffering from and suffering with, which is associated with pain or discomfort from a condition.
   
• “Hyperparathyroidism” was construed consistent with medical dictionaries as “increased (i.e., above normal) secretion of PTH by the parathyroid gland."
   
• “End stage renal disease” was construed as “a disease wherein the patients’ kidneys no longer function at a level necessary to sustain life and thus require chronic dialysis or kidney transplantation.”
   
• “Effective Amount” was construed as “an effective amount of 1a-OH-vitamin D2 to lower and maintain lowered blood concentrations of PTH with a lower incidence of hypercalcemia than is associated with the extant conventional Vitamin D3 treatments.”

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Chicago Mercantile Exchange, Inc. v. Tech. Research Group, Inc., No. 09 C 3895, Slip Op. (N.D. Ill. Jun. 28, 2010) (Castillo, J.).

Judge Castillo construed the claim terms in this patent case involving methods for tracking Rolling Spot Currency contracts. Here are constructions of note:

• The Court discounted the extrinsic evidence and focused on the intrinsic evidence to construe "principal market marker" as "an entity required to provide the following functions: (1) continuously maintain a two-sided bid/offer market of specified size and spread for its designated product(s); (2) maintain a public order book with respect to these assigned products; and (3) give priority to customer order execution over personal trading. As compensation for the fulfillment of these responsibilities, this entity is to receive priority volume benefits."
   
• Because "computer" had a very apparent ordinary meaning, the Court relied upon dictionaries to define "computer" as "a programmable electronic device that can store, retrieve, and process data."
   
• The preambles of each claim were limiting to the extent they identified a computer and the computer was not identified elsewhere in the claim. Where there was not a computer identified in the body of the claim, the preamble was a necessary aspect of the invention.
   
• "Execute" was defined consistent with its ordinary meaning as "to carry out fully and completely."
   
• The Court refused to define "receive" or "directly receive." But the Court held that doing so would improperly impart a claim limitation from the specification.
   
• "Bid," "offer," "trade," and "order", were all defined based upon their dictionary definitions.
   
• To sustain the validity of the claims, the Court defined "rolling spot" as how plaintiff's Rolling Spot Currency contracts were defined as of the effective filing date.
   
• "Currency futures" were construed based upon financial dictionaries as "contracts in the futures markets that are for delivery in a major currency such as U.S. dollars, British pounds, French francs, German marks, Swiss francs, or Japanese yen."

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Kathrein-Werke KG v. Radiacion y Microondas S.A., No. 07 C 2921, Slip Op. (N.D. Ill. May 17, 2010) (Guzmán, J.).

Judge Guzmán construed the contested terms of plaintiff's patent to a high frequency phase shifter unit having a pivotable tapping element. Of particular note, the Court construed:

• "Stripline" was a conductive strip, but it did not need to be a flat, conductive strip. Nothing in the claim or specification required striplines be flat, and plaintiff's extrinsic evidence could not overcome the intrinsic evidence.
   
• "Stripline sections", "stripline segments" and "stripline elements" were construed to mean the same thing. While claim differentiation creates a presumption that different terms have different meanings, that presumption was overcome by the intrinsic evidence which showed patentee "obstinately" using the terms to mean the same thing.
   
• "Extending" was given its ordinary meaning of "lengthening." The Court held that plaintiff's definition "lengthening in one or more direction" included an unnecessary element that was not supported by the intrinsic evidence.
   
• "Transformers" were defined as "devices that transfer electrical signals and match impedance values." The Court also construed the statement that transformers "share power" as meaning that transformers "permit the sharing of power" because the parties agreed that transformers cannot share power.

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Albecker v. Contour Prods., Inc., No. 09 C 6312, Slip Op. (N.D. Ill. May 3, 2010) (Castillo, J.).

Judge Castillo construed the claims in this patent case involving a wedge-shaped backrest and legless leisure chair. Of particular interest, the Court construed the following terms:

• "Secured to" was defined as "attached using attachment means" that connect a type cushion to a foundation. The "secured to" definition excluded unitary top cushion foundations. The fact that the Court's definition excluded one embodiment because that embodiment was part of a restriction requirement; and
   
• "face of the generally wedge shaped foundation" was not properly briefed, but the Court held that the face was top surface.

The Court declined to construe other claim terms because the parties told the Court that the construed terms were the key terms.

The Court also noted that the parties' Local Patent Rule 4.2(b) joint appendix failed to provide a complete prosecution history – a violation of the LPR 4.2(b).

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Kim v. The Earthgrains Co., No. 01 C 3895, Slip Op. (N.D. Ill. Feb. 18, 2010) (Cox, Mag. J.). 

Judge Cox granted defendant summary judgment, limiting plaintiff's potential damages to the date that the Patent Office issued plaintiff's reexamination certificate. During reexam, the transitional phrase in each of the claims at issue was revised from "consisting essentially of" to "consisting of." "Consisting essentially of" signals a partially open claim which can include non-claimed ingredients so long as they do not materially affect the claimed properties of the invention. "Consisting of," however, signals a closed claim limiting it to the listed elements, unrelated elements and unavoidable impurities. 

The defendant argued that the changed transitional phrases were substantive changes which limited the damages period to the period from the reexam certificate forward. The Court held that the changed transitional phrases was a substantive change. The plaintiff argued that the changed transitional phrases did not change the scope of her patents based upon plaintiff's research. But the Court held that the plaintiff had not shown that any element excluded from the original claims would have also been excluded from the reexamined claims. The Court also explained the scope of "consisting essentially of" as follows:

[A] formula which falls under a "consisting essentially of" claim may contain additional "active" ingredients not listed in the claim, as long as the additional active ingredients do not materially alter the "basic and novel" characteristics of the invention. Ecolab also suggests that additional active ingredients which improve the performance of the basic claim formula, but do not otherwise change its function, do not materially alter the "basic and novel" characteristics of the invention.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., Case Nos. 2008-1392,-1393 & -1922, Slip Op. (Fed. Cir. Feb. 25, 2010) (Rader, J.) (Clark, J. concurring).

Writing for a panel including Judge Lourie and Eastern District of Texas District Judge Clark, Judge Rader affirmed each of the challenged decisions from Judge Moran’s jury trial in this patent litigation involving futures trading software.

For much more on this case, click here to read numerous posts in the Blog’s archives analyzing Judge Moran’s opinions and various aspects of the jury trial. Judge Moran construed the claims of the patents-in-suit, ruled upon several summary judgment motions and presided over the jury trial. The jury found that defendants’ (collectively “eSpeed”) Future View software willfully infringed the patents and that the patents were valid, awarding plaintiff Trading Technologies (“TT”) $3.5M. Judge Moran remitted the damages overall to approximately $2.5M.

Claim Construction

The most interesting aspect of the decision is the discussion of the de novo review of claim construction decisions. Judge Rader spent two and a half pages explaining the fact-law dichotomy of claim construction and concluded that claim construction required resolution of evidentiary and factual issues before construing the disputed terms:

In sum, claim construction involves many technical, scientific, and timing issues that require full examination of the evidence and factual resolution of any disputes before setting the meaning of the disputed terms.

And District Judge Clark wrote a concurring opinion solely to argue against de novo review:

[de novo review] may result in the unintended consequences of discouraging settlement, encouraging appeals, and, in some cases, multiplying the proceedings.

After a de novo review of his decisions, the Court upheld Judge Moran’s constructions. “Static display of prices” meant "a display of prices comprising price levels that do not change positions unless a manual re-centering command is received." And a “static condition” meant that “the price axis never changes positions unless by manual re-centering or re-positioning.” While Judge Moran’s constructions may have appeared narrower than the patent intended initially, they were supported by both the intrinsic and extrinsic evidence. Because eSpeed’s Dual Dynamic and eSpeedmeter systems had mandatory re-centering features, they did not literally infringe.

Doctrine of Equivalents

The court upheld Judge Moran's ruling that the doctrine of equivalents did not apply to the static elements in the claim. Even if the accused products only re-centered once or twice a day, allowing that re-centering to be captured by the doctrine of equivalents would vitiate the claims. Furthermore, prosecution history estoppel also barred equivalents. The patentee differentiated his invention by explaining that its "price axis do[es] not move."

Willfulness

The Court upheld Judge Moran's ruling overturning the jury's willfulness finding. eSpeed's prompt redesign efforts and immediate removal of infringing products were not objectively reckless. And TT offered no evidence that eSpeed sold Future Views during the contested period.

Indefiniteness

The Court held that "single action of a user input device" was not indefinite. Judge Moran correctly construed the term as requiring "an action by a user within a short period." One of ordinary skill in the art could distinguish between single and multiple actions, even when a "single action" was a double-click.

Priority Date

The Court held that there was an issue of material fact regarding the priority date warranting a jury trial. The Court upheld the use of patent law experts, and found a sufficient basis for the jury's priority decision:

Considering the undisputed knowledge of those skilled in the art, disclosure of a species in this case provides sufficient written description support for a later filed claim directed to a very similar and understandable genus. Accordingly, the patents-in-suit are entitled to claim priority to the provisional application.

Inequitable Conduct

The Court upheld Judge Moran's ruling that failure to disclose certain software to the PTO was not inequitable conduct. The software was not material because the software's use after the priority date would not have impacted the examiner's analysis. And confidential use of the software for personal purposes was experimental. 

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ImageCube LLC v. The Boeing Co., No. 04 C 7587, Slip Op. ( N.D. Ill. Jan. 22, 2010) (Dow, J.).

Judge Dow entered a final judgment as to defendant Boeing in this patent case and stayed the remaining claims pending a Federal Circuit appeal of the claim construction and summary judgment of Boeing's final judgment. The parties all agreed that the Court's claim construction and partial summary judgment ended the case as to Boeing. What was left of the case was the remaining defendants' affirmative defenses and noninfringement, invalidity and unenforceability counterclaims. "Mere defenses" are not sufficient to avoid a Fed. R. Civ. P. 54(b) final judgment. Once one defense is decided for defendant, additional defenses need not necessarily be considered. And the remaining counterclaims would all benefit, should they be tried upon remand, from the Federal Circuit's claim construction decision. An immediate appeal might also hasten resolution of the entire case. Plaintiff acknowledged that it was unlikely to pursue its claims if the Federal Circuit upheld the Court's claim construction.

Finally, the Court noted that defendants, over plaintiff's objections, sought and got the schedule they wanted addressing limited issues before full discovery. Defendants cannot, therefore, "complain too loudly" about seeking more definitive resolution of limited issues before turning to the remainder of the case.

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totes Isotoner Corp. v. Panther Vision Corp.,  No. 09 C 1604, Slip Op. (N.D. Ill. Jan. 4, 2010) (Pallmeyer, J.).

Judge Pallmeyer construed plaintiffs' claims for its patent covering headgear equipped with LEDs for illuminating the wearer's line of sight. Here are some constructions of note:

• The Court rejected both parties' construction of "array" instead opting for a dictionary definition;
   
• The Court rejected both parties' constructions of "contiguous beam" in favor of a dictionary definition "a single, unbroken beam of light."
   
• The Court held that "connected" and "attached" were interchangeable, but preferred "attached."
   
• The Court rejected both parties' constructions of "adjacent" construing it as "closely proximate."

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SP Techs., LLC v. Garmin Int’l, Inc., No. 08 C 3248, Slip Op. (N.D. Ill. Oct. 9, 2009) (Pallmeyer, J.).

Judge Pallmeyer construed the claims of plaintiff SP Technologies' (“SPT”) patent to a method for inputting data on a touch-screen display using a keyboard that cannot be resized, moved or closed by a user. As an initial matter, the Court noted that, contrary to SPT’s argument, the Court was not required to consider the accused products when construing the claims. Instead, the Court had discretion to consider the accused devices. And because the parties did not provide a reason to consider them, the Court chose not to include the accused products in its analysis. Here are constructions of note:

• “Plurality of date input fields” was defined as more than one field, but the fields need not simultaneously appear on the same screen.

• “Termination” referred to terminating or closing the keyboard, but not resizing or moving the keyboard as defendants argued. The ordinary meaning of terminate controlled over some statements the inventor made during prosecution that could have been read more broadly.

• “Derived input” was defined as information requested by a computer application or program, as opposed to information “desired” by a user.

Finally, the Court noted a problem with the defendants’ presentation of the evidence that will be remedied by the Local Patent Rules. Defendants cited to documents within the prosecution history by title, as opposed to using Bates numbers, making it hard for the Court to find the relevant portions of the 250 page prosecution history.  Local Patent Rule 4 requires that parties file a Joint Appendix as part of the claim construction process that is paginated and includes the prosecution history, among other documents. Click here for much more on the Local Patent Rules in the Blog’s archives.

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General Kinematics Corp. v. Carrier Vibrating Equipment, No. 08 C 1264, Slip Op. (N.D. Ill. Jul. 27, 2009) (Coar, J.).

Judge Coar construed the claims of declaratory judgment defendant's patent for a vibratory conveyor system.  The following constructions were particularly interesting:

• The Court noted that declaratory judgment plaintiff did not separately define the function and structure for the means plus function elements.  While there was no direct impact from the failure to define function and structure separately, the Court noted that the definitions did not assist its constructions.
   
• The structure of one means plus function element was not just a generic controller, but a controller as described in the specification and figures, as well as equivalents of them.

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Von Holdt v. A-1 Tool Corp., No.. 04 C 4123, Slip Op. (N.D. Ill. Jun. 19, 2009) (Manning, J.).

Judge Manning adopted Magistrate Judge Brown's claim construction Report and Recommendation over defendants' objections in this patent infringement case involving molded buckets with stacking strength.  Of particular interest:

• "Side-by-side" meant "one beside the other."  The Court refused to hold that nothing could be between the ribs of the buckets because doing so would be construing the terms in reference to the accused devices.
   
• "[A] relatively large radius" meant a single large radius, despite the fact that "a" or "an" following comprising language generally means one or more.  In this case, one or more would not make sense.  Multiple radii would require one or more radius to be smaller than the others.  Additionally, the strongest bucket configuration was a single radius, as shown in the patent figures.
   
• "In alignment" meant in a "straight line with," not "parallel."  Requiring the alignment to be parallel was an unnecessary restriction.

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Only the First, Ltd. v. Seiko Epson Corp., No. 07 C 1333 (N.D. Ill. Jul. 7, 2009) (Dow, J.).

Judge Dow construed the claims of plaintiff's patent to a printing system that used a combination of four to six colors to achieve a wider range of brighter colors than possible just using the primary colors.  The following constructions were of particular interest:

• The parties agreed that each of the six colors were defined by three component colors in order of intensity.  Defendant argued the three colors had to be the top three colors by intensity, but plaintiff argued that the three colors simply had to be in order of intensity allowing for other colors to be between the three along the intensity spectrum as long as the three were in the correct order.  The Court denied defendant's construction because it would read a preferred embodiment out of the claims.  And the Court rejected plaintiff's construction because in certain cases a single color could be defined as two different of the six colors.  Instead, the Court held that one of ordinary skill in the art would understand that the first two colors in the order had to be the highest intensity, but that the third component could fall anywhere thereafter.
   
• The Court held that "quantity" and "intensity" were synonyms in the phrase "quantity or intensity" of a color.  The Court held that bot terms referred to the area under the color's spectroscopic graph.
   
• The Court held that because colors are necessarily subjective, the six colors required a definition in order to avoid indefiniteness.  The Court, therefore, used a table in the specification identifying a range of wavelengths for each color, slightly modifying the range for red to account for a wavelength of red identified in a preferred embodiment.

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Microthin.com, Inc. v. SiliconeZone USA, LLC, No. 06 C 1522, Slip Op. (N.D. Ill. May 6, 2009) (Kendall, J.).

Judge Kendall construed the claims of plaintiff Microthin's patents to non-slip mats and based on the constructions granted defendant SiliconeZone summary judgment of invalidity as to the first claim of each patent. Of particular interest, the Court construed the following terms:

• Non-Slip meant reducing or preventing smooth sliding motion, but the Court declined to add Microthin's proposed requirement that it not be sticky to the touch because there was an independent claim that only added the requirement that the non-slip surface was not sticky to touch.
   
• Consisting of was construed as a closed transitional phrase, as it is normally used in patent law.

Based on its construction of non-slip, the Court held the first claims of each patent invalid. Microthin's sole argument against the asserted prior art was that it did not teach a non-slip surface because the surface was sticky to the touch. Because the Court construed non-slip without the sticky limitation, the first claims of each patent were invalid.

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SRAM Corp. v. Formula S.R.L., No. 06 C 1025 & 07 C 1565, Slip Op. (N.D. Ill. Apr. 3, 2009) (Kocoras, J.).*

Judge Kocoras construed the terms of plaintiff SRAM's patents to components of a hydraulic disc brakes for bicycles.  Of particular interest, the Court construed the following terms:

• "One-piece lever" did not require further construction.  Defendant's proposed construction -- a lever consisting of only one piece -- was unnecessarily limiting.  Furthermore, the use of patent term of art "consisting of" would have "drastic consequences" to the scope of the inventor's protection.  Similarly, defendant's other construction -- only one piece -- was unnecessary.  It did not add anything to the term "one-piece."
   
• "Attached" did not require a direct connection between two components, as proposed by defendant.  Defendant's reliance upon the patent's figures was pertinent, but not dispositive.  In fact, the specification specifically identified an attachment between two components by a third component.  Attached, therefore, meant the connection of two components, whether or not the connection used an intermediate component.

*  I am posting about this decision on the eve of the first Grand Tour of 2009, the Giro d'Italia.  Good luck to Lance Armstrong, Levi Leipheimer, and the American teams, High Road and Slipstream.

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Callpod, Inc. v. GN Netcom, Inc., No. 06 C 4961, Slip Op. (N.D. Ill. Mar. 6, 2009) (Kendall, J.).
 

Judge Kendall construed the disputed claim terms in plaintiff's patent directed to methods and devices for making conference calls using cordless and mobile phones. The following constructions were of particular interest:

• “Plurality of participants” meant more than one participant. The parties agreed that plurality meant more than one in relation to headsets, but defendants argued that a plurality of participants was three or more because a conference call generally required more than two participants. The Court, however, noted that having two different definitions of plurality would lead to the odd result of requiring two headsets and three participants.
  
• “Callpod” was construed as a portable device that forms conference calls among a plurality of participants. The claims did not provide a clear definition, but the Court noted that the patentee's lexicography governs and construed the term based upon the specification.

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Constant Compliance, Inc. v. Emerson Process Mgt. Power & Water Sol'ns., Inc., No. 08 C 3724, Slip Op. (N.D. Ill. Feb. 13, 2009) (Ashman, Mag. J.).

Judge Mason granted in part plaintiff's motion to bar defendant from opposing plaintiff's claim constructions because of defendant's failure to meet the Court's deadline for the parties to exchange proposed claim constructions. In response to an interrogatory, defendant identified claim terms that it believed required construction. But defendant did not submit any proposed constructions until two weeks after receiving plaintiff's constructions on the date of the Court's deadline for joint exchange of constructions. The Court held that defendant was barred from offering constructions for those terms it identified as requiring construction in its interrogatory response, but allowed defendant's constructions of those terms offered by plaintiff, but not in defendant's response. Additionally, as to the terms identified in defendant's interrogatory response, the Court adopted plaintiff's constructions because no alternative construction had been timely offered.

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Ledergerber Med. Innovs., LLC v. W.L. Gore & Assocs., Inc., No. 07 C 1593, Slip Op. (N.D. Ill. Feb. 17, 2009) (Kendall, J.).

Judge Kendall construed the claims in this patent dispute regarding surgical implants for use with brain tumors and hernias that direct scar tissue away from the implant surfaces. Of particular interest, the Court held, relying in part upon a dictionary definition, that "sheet" was a thin structure, instead of defendant's broader definition which did not require that the structure be thin. The Court held that "non-textured" was focused on the tactile characteristics of the surface and meant that the surface was smooth. A surface was not required to be free of macroscopic defects. And the Court construed textured as the opposite of non-textured or not smooth.

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Anyone that has litigated a patent that was originally written in a language other than English has almost certainly dealt with translation issues.  For that matter, anyone that has used foreign language prior art or technical documents has likely faced translation issues.  The new PatLit blog has an interesting post about translation issues related to a European patent litigation -- click here to read the post.  A PatLit reader suggests that there are few written opinions dealing with translation issues, but that translation issues must be common.  My experience is that the complexity and frequency of translation issues are directly related to the complexity of the technology.  Not a shocking conclusion because complex, cutting-edge technology has its own terminology that often does not lend itself to seamless translation.  The fact that there are not many written opinions makes less sense.  But here are a few possible explanations:  1) courts treat translation issues as any other difference of opinion in claim constructions and deal with them without mentioning the translations; or 2) cases that suffer from unclear or bad translations may be more likely to settle before a decision.

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Rowe Int'l. Corp. v. ECast, No. 06 C 2703, Slip Op. (N.D. Ill. Nov. 28, 2008) (Kennelly, J.).

Judge Kennelly construed the terms of plaintiff's computer jukebox patents -- click here for more on this case in the Blog's archives, including more on claim construction.  Of particular interest, the Court held that "programmable computer memory" and "programmable memory" both mean a computer memory that can be programmed, requiring little construction.  The Court rejected defendant's construction that would have limited the term to random access memory. 

The parties both sought further construction of "user attract", but the Court had previously construed the term and saw no basis to revisit the construction without a clear and succinct explanation from counsel as to why it was required.

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Eazypower Corp. v. Jore Corp., No. 04 C 6372, 2008 WL 3849921 (N.D. Ill. Aug. 14, 2008) (Zagel, J.)

Judge Zagel construed the claims of plaintiff Eazypower’s patent to a portable screwdriver with a flexible shaft. Of particular interest, the Court held that despite Eazypower’s Jepson claim format, its preamble was not limiting. 

Jepson claiming is a drafting style – common in Europe, but relatively rare in the United States – in which the prior art is described in the preamble and the claimed improvements over the prior art are described in the body of the claim. The Court acknowledged that Jepson claims carry a rebuttable presumption that the claim’s preamble is limiting. But the Court held that the Eazypower rebutted the presumption in this case. The claim’s preamble, therefore, was not limiting. First, the Court relied upon two 2003 Northern District opinions, by Judges Guzman and St. Eve, holding that the preambles of the claims at issue overcame the presumption and were not limiting. While these opinions were not controlling, the Court found them well-reasoned and persuasive. The Court explained that the preambles were not limiting because they were “not necessary to give life to the claims,” citing Judge Guzman’s decision. Eazypower v. Vermont Am. Corp., No. 01 C 3252, 2003 WL 1720024, at *10 (N.D. Ill. Mar. 28, 2003).

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Liquid Dynamics Corp. v. Vaughan Co., No. 06 C 5611, 2008 WL 3007996 (N.D. Ill. Aug. 4, 2008) (Kennelly, J.).

Judge Kennelly construed “approximately” as used in plaintiff Liquid Dynamic’s (“LD”) patent for wastewater treatment tanks, and denied defendant Vaughan Co.’s (“Vaughan”) motion for summary judgment.  The claim at issue required that flow generators were located “between approximately 30 percent and 70 percent” of the radial distance from the center to the inside wall of the tank.  LD argued that approximately was defined by industry standard tolerances of 10%.  Vaughan argued that approximately was limited to 5% based upon the broadest range of 25%-75%.

The Court held that the intrinsic evidence – patent’s specification and prosecution history – made clear that 25%-75% were not the outer limits of flow generator placement.  But the intrinsic evidence did not clarify what those outer limits were or what approximately meant.  The Court, therefore, relied upon the extrinsic evidence – plaintiff’s expert’s affidavit – and held that 10% was an industry standard.

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Midtronics, Inc. v. Aurora Performance Prods. LLC, No. 06 C 3917, 2008 WL 2745941, (N.D. Ill., Jul. 11, 2008) (Shadur, Sen. J.).

Judge Shadur construed the disputed terms of plaintiffs’ electronic battery tester patent. The patent taught a form of “dynamic” battery testing and each disputed term revolved around the meaning of “dynamic.” The Court adopted plaintiffs’ definition – varying over time – without limiting dynamic to require an AC current (a current that varies regularly over time). The Court held that requiring an AC current was an unnecessary limitation. Not all currents that vary over time are AC, and requiring an AC current would have read a preferred embodiment out of the claims.

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ACCO Brands USA LLC v. SecuComputer, Inc., Nos. 03 C 1820, 06 C 7102, 07 C 0591, 2008 WL 2566863 (N.D. Ill., Jun. 25, 2008) (Zagel, J.).

Judge Zagel construed the claims of plaintiff’s patents to security locks for portable electronics, like laptops. The Court held that all term, but one had ordinary meanings that were not altered by the intrinsic evidence. Of particular note, the Court held that “about” had an ordinary meaning of “approximately.” The Court denied one defendant’s effort to limit “about” to within machining tolerances of dimensions set forth in a preferred embodiment.

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Goss Int'l Ams., Inc. v. Graphic Mgmt. Associate, Inc., No. 05 C 5622, Slip Op. (N.D. Ill. Jun. 11, 2008) (Manning, J.).

Judge Manning construed the terms of plaintiff's patent related to a newspaper assembly collating machine by adopting in part and rejecting in part Magistrate Judge Valdez's Report and Recommendation ("Report") construing the claims. Of particular note, the Court considered whether it should review the Report de novo or for clear error, because the constructions were not dispositive. Because the constructions likely would be case dispositive in fact, and because prior cases reviewed magistrate claim construction reports de novo, the Court held that de novo review was appropriate.

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Shen Wei (USA), Inc. v. Ansell Healthcare Prods., Inc., No. 05 C 6003, Slip Op. (N.D. Ill. May 29, 2008) (Guzman, J.).

Judge Guzman construed the disputed claim terms from plaintiff's patent for a skin-enhancing glove. The parties disputed two terms: dehydrated and dry. Defendants argued dehydrated meant removal of all water, while plaintiffs argued it meant removal of water, but not necessarily all water. Judge Holderman construed dehydrated as used in a related patent in an earlier suit between the parties, consistent with plaintiff's proposed construction.* Because Ansell advanced the same construction in the present suit that it lost in the earlier suit before Judge Holderman, the Court held that collateral estoppel, or issue preclusion, prevented Ansell from arguing against plaintiff's construction. The Court also noted that Judge Holderman's construction was correct.

The Court construed "dry" in a similar fashion to mean removal of water, but not necessarily all water, based upon the prosecution history.

* I was involved in the briefing before Judge Holderman, but I am not involved in the current case.

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Fernandez Innovative Techs., LLC v. General Motors Corp., No. 07 C 1397, 2008 WL 2168843 (N.D. Ill. May 23, 2008) (Kendall, J.).

Judge Kendall construed the claims of plaintiff's U.S. Patent No. 6,963,899 related to vehicle telematics – systems like the accused products Onstar and Lexus Link. Construction of the two terms were of particular note:

Real Time

Through the claim construction hearing the parties agreed that "real time" meant continuous. But after the hearing, plaintiff filed a motion arguing that real-time meant "contemporaneous." The Court allowed defendants a responsive submission, and then adopted plaintiffs' construction because it comported with the intrinsic evidence and dictionary definitions better than defendants' construction did.

Selects and Downloads

The Court held that neither party's construction of "selects and downloads" was consistent with the agreed upon construction of related term "selects and sends." The Court, therefore, gave the parties fourteen days to meet and confer, and then either submit an agreed upon construction, or individual revised constructions.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 2008-1392 & 1393 (Fed. Cir.).*

As Judge Moran predicted, the parties have appealed this case to the Federal Circuit.* The parties’ appeals were consolidated, leaving a single appeal with a substantial number of issues. The great, new Patent Appeal Tracer* reported that plaintiff Trading Technologies (“TT”) is appealing at least the following decisions (click here to read Tracer’s post on the cross-appeals):

Claim constructions, specifically constructions of "static price axis" and "order entry region"  (click here and here and here for the Blog’s posts regarding claim construction opinions);

• Summary judgment of noninfringement of most of defendant eSpeed’s software packages, including the following titles: Dual Dynamic, eSpeedometer, and modified eSpeedometer programs (click here for the Blog’s post regarding this opinion);
  
• Partial summary judgment for TT regarding prior use (click here for the Blog’s post regarding this opinion); and
  
• Judgment as a matter of law overturning the jury’s willfulness finding (click here for the Blog’s post regarding this opinion).

And eSpeed is appealing, at least, the following decisions:

• The permanent injunction regarding certain of eSpeed’s software packages (click here for the Blog’s post regarding the Court’s permanent injunction).

* Thanks to Patent Tracer for linking to the Blog’s TT v. eSpeed coverage. Click here to read much more about this case in the Blog’s archives.

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Card Activation Techs., Inc. v. Barnes & Noble, Inc., No. 07 C 1230, Slip Op. (N.D. Ill. Mar. 18, 2008) (Gottschall, J.).

Judge Gottschall denied defendants' motion for summary judgment of invalidity. Each of plaintiff's independent claims – covering a counter-top terminal for processing debit card payments – included a “telecommunications means” limitation. The parties agreed that “telecommunications means” was a means plus function limitation. Defendants argued that the “telecommunications means” was indefinite because the patent's specification did not recite any corresponding telecommunications structure, such as a modem. The Court held that the specification did not disclose any specific telecommunications structure. But the Court held that no structure was required, where one of ordinary skill in the art would know what the structure was based upon the specification, citing Aristocrat Tech. Australia PTY LTD v. Multimedia Games, Inc., __ F.3d __, 2008 WL 484449 (Fed. Cir. Feb. 22, 2008). Relying upon plaintiff's expert, the Court held that based upon the specification, one of ordinary skill in the art would understand telecommunications means to be a modem.

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Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 2007-1243, 1244, Slip Op. (Fed. Cir. Jan. 7, 2008).*

The Federal Circuit affirmed the Northern District jury’s obviousness verdict, and Judge St. Eve’s denial of defendant’s inequitable conduct claim. But the Federal Circuit reversed the Northern District’s construction of “power conversion circuit” and remanded for further proceedings and, perhaps, a new trial.** The Federal Circuit held that the Northern District relied largely upon claim differentiation for its construction and, in the process, gave the patent scope beyond the disclosed invention.

The Federal Circuit held that the Northern District’s pre-KSR obviousness jury instruction was not reversible because defendants identified no evidence in the record that supported an obviousness finding even under the broader KSR standard.

* Click here for extensive coverage of this case in the Blog’s archives.

**  The Court scheduled a status conference early next week.  We may learn at that conference whether a new trial is being scheduled or whether summary judgment will be briefed or a settlement conference scheduled first.

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Chamberlain Group, Inc. v. Johnson Controls Interiors LLC, No. 2007-1314-1467, Slip Op. (Fed. Cir. Feb. 19, 2008).

The Federal Circuit reversed Judge Moran’s construction of “binary code” and, therefore, reversed the limited preliminary injunction entered by the Northern District - click here and here for the Blog’s posts regarding the injunction. The Northern District construed “binary code” as a code represented by two values, but not necessarily a binary number – click here and here for the Blog’s posts regarding the Northern District’s claim and construction opinions. The Federal Circuit praised the Northern District’s claim construction analysis, but reversed the construction:

The district court commendably strove to follow this court’s rules for claim construction. See Phillips, 415 F.3d at 1318-19. In this regard, the trial court weighed the intrinsic evidence along with the extrinsic evidence and properly sought to avoid importing a limitation from the specification into the claims. See id. Nonetheless, this court discerns that the ‘544 patent specification gives particular limiting meanings to the language in the claims.

The Federal Circuit held that “binary code” required a binary (or base two) number. Otherwise, any values would meet the limitation because all values, whether in base two, three, the more standard ten or any other, are represented by computers using two values – 1 and 0. Because the revised claim construction called into question the Northern District’s likelihood of success analysis, the Federal Circuit reversed the preliminary injunction.

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Emergis Techs., Inc. v. PNM Resources & Otter Tail Corporation, Nos. 2007-1247 & 1252, Slip Op. (Fed. Cir. Jan. 31, 2008) (Moran, Sen. Jr.).*

Judge Moran, sitting by designation, authored the Federal Circuit’s decision reversing in part the District of New Mexico’s and the District of Minnesota’s claim constructions and upholding the Court’s findings of noninfringement. The Court held that payments that went “directly” from customer to invoicer were correctly construed as requiring no third party involvement. But the Court held that based on the specification, “customer invoice account number” was an invoice number as opposed to a more generic customer number. The Court upheld the non-infringement decision because the accrued systems either used third parties to process payments or did not use an invoice number.

* Click here for the opinion.  And thanks to Dennis Crouch of Patently-O for pointing out this decision.

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. Jan. 2, 2007) (Moran, Sen. J.).*

Judge Moran denied defendants’ (collectively “eSpeed”) motion for judgment as a matter of law that plaintiff Trading Technologies’ (“TT”) patent was invalid for indefiniteness based upon the claim term “single action of a user input device” (“Single Action”). The Court previously construed Single Action as “an action by a user within a short period of time that may comprise one or more clicks of a mouse button or other input device.” Before trial, the Court used the definition to exclude evidence regarding a Tokyo Stock Exchange (“TSE”) software package that required double clicking, entering a quantity and pressing “enter” – click here for the Blog’s discussion of that opinion.

TT argued that the phrases “one or more clicks” and “short period of time” in the Court’s construction were indefinite because they did not sufficiently delineate the scope of the term. The Court noted that it did not need absolute clarity to define a claim term and held that the Single Action was sufficiently definite. The Court reasoned that it had been able to construe the term based largely upon the specification. And neither “one or more clicks” nor “short period of time” rendered the claim indefinite because the phrases are part of the definition, not the claim language. 

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Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 4287501 (N.D. Ill. Dec. 4, 2007) (Coar, J.).*

Judge Coar construed the claims of plaintiff Abbott’s patent related to an extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL), denied defendant Sandoz’s motion for summary judgment of noninfringement and granted Abbott summary judgment regarding anticipation, obviousness and inequitable conduct.  Of particular interest, the Court held that the use of Markush group language – “selected from the group consisting of” – in the specification did not necessarily limit the construction of claim terms. The Court also noted that materiality of a reference in an inequitable conduct analysis was determined from the perspective of a reasonable examiner, not the patentee.

* Click here for more on this case and related cases.

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Easypower Corp. v. Alden Corp., __ F. Supp.2d __, 2007 WL 4191837 (N.D.Ill. Nov. 21, 2007) (Denlow, Mag. J.).

Judge Denlow denied defendant Alden Corp.’s (“Alden”) motion for reconsideration of the Court’s construction of “acute angle relative to the axis.” The Court’s construction required an angle less than 90°, and further required that if there were two or more angles, any two angles together be greater than 90°. Alden argued that the requirement regarding two or more angles was improperly read into the claim without support in the specification. But the Court held that the limitation was required based upon the clear language of the specification. Additionally, the Court noted that the parties were given ample opportunities to argue the issue, both on the papers and during the Markman hearing.

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Everything Baseball Ltd., LLC v. Team Athletic Goods, Inc., No. 05 C 5526, 2007 WL 2608551 (N.D. of Ill. Sep. 4, 2007) (Pallmeyer, J.).*

Judge Pallmeyer construed the claims of plaintiff’s patent to a baseball catcher’s chest protector with flexible shoulder guards. Defendant argued that the “scope and content of the prior art” should be determined before construing the claims, citing the Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) dissent. But the Court held that it need not survey the prior art before construing the claims. And the Court noted that the quoted portion of the Phillips dissent argued that obviousness should receive de novo review, as does claim construction. The dissent was not attempting to add additional claim construction steps.

Additionally, and maybe most importantly for Cubs fans (like me) still smarting over being swept out of the playoffs this season, the Court explained in a footnote Javy Lopez’s (who wore a patented chest protector for at least one year) connection to the Tommy John surgery from which Cubs’ ace Kerry Wood has arguably never fully recovered. If Kerry Wood were still the 20 K kid he once was, maybe the Cubs would have given the Colorado Rockies a run in the NLCS, setting up a Cubs-Red Sox Series that would have been a dream for Cubs fans, baseball historians and network executives. Unfortunately, the Cubs curse (or at least lack of postseason success) lives another year and the Rockies get a chance to complete an amazing rags to riches story.

*Click here for more about this case in the Blog's archives.

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Eazypower Corp. v. Alden Corp., __ F. Supp.2d __, 2007 WL 2601309 (N.D. Ill. Sep. 6, 2007) (Denlow, Mag. J.)

Magistrate Judge Denlow construed the claims of plaintiff’s patents regarding bits for removing damaged screws and fasteners. Of particular interest, the Court defined “in a place including the axis” as “simply what is says”:  “in a plane including the axis.” Plaintiff argued that the Court should read manufacturing tolerances into the term. But the Court held that manufacturing tolerances could not be read into claim terms citing Senned, Inc. v. Richard-Allan Med. Indus., Inc., 888 F.2d 815 (Fed. Cir. 1989).

Of course, if the specifications and prosecution histories do not limit the doctrine of equivalents, plaintiff will be able to recapture products that would meet the “in a plane including the axis” but for manufacturing tolerances.

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Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 04 C 5312, 2007 WL 2713335 (N.D. Ill. Sep. 12, 2007) (Moran, Sen. J.).

Judge Moran granted in part plaintiff Trading Technologies’ (“TT”) motion in limine, precluding defendant eSpeed from arguing to the jury that any feature requiring the specific sequence – a double mouse click, keying in a value and pressing the enter key – fell within the Court’s construction of a “single action.”* The Court reasoned that it defined single action from the perspective of the software end-user. And from the user prospective the double-click/quantity/enter sequence was clearly more than a single action.

The Court acknowledged that taking this decision from the jury was “unusual,” but the Court believed its decision was warranted because of the complexity of the case and how clearly outside the construction of single action the double-click/quantity/enter sequence was: 

The parties have no lack of theories, especially when it comes to invalidity and prior art. Therefore, as we are convinced that it would be impossible for a reasonable jury to find that the three steps described by eSpeed’s attorney could fit into our definition of single action, we grant TT’s motion to exclude evidence that it does. Rather than throw a non-starter at the jury or deal with this issue during post-trial motion practice, we exclude the evidence from the start. Although our decision is nearly akin to a partial summary judgment ruling, we are convinced that it is correct, it will save precious judicial resources, and simplify the case for the jury.  (Citations and footnotes omitted).

I understand that the trial is ongoing.  I am hoping to make it to closing arguments and will post about them if my schedule allows me to see them. 

* Click here to read much more about this case and its related cases in the Blog’s archives.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, Slip Op. (N.D. Ill. Aug. 27, 2007) (Moran, Sen. J.).*

Judge Moran denied plaintiff Trading Technologies’ (“TT”) motions to reconsider the Court’s grant of summary judgment of noninfringement regarding defendant eSpeed’s software utilizing automatic and drift recentering of a price axis (discussed here). This opinion is most notable for the Court’s blunt footnote acknowledging that this case will be appealed to the Federal Circuit and that, therefore, the Court believes that “speedy resolution” is in all parties’ best interests:

We recognize that TT may have a valid argument [that an amendment during prosecution did not narrow the claims] and note that this was a close call. We also recognize that our decision may have been influenced by the impending trial and our disinclination to reopen a significant issue for debate. We have previously noted that this case is certain to find itself in front of the Federal Circuit for ultimate resolution and acknowledge our place as a “way station” to the Court of Appeals. Therefore, we are further convinced that speedy resolution of all issues before this court is in everyone’s best interest. . . .

Certainly other courts have thought along these lines, but few voice these opinions. 

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Herman Miller, Inc. v. Teknion Corp., No. 05 C 2761, 2007 WL 2230042 (N.D. Ill. Jul. 30, 2007) (Gettleman, J.).

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PSN Illinois, LLC v. Ivoclar Vivadent, Inc., No. 04 C 7232, 2006 WL 3523760 (N.D. Ill. Dec. 7, 2006) (Kendall, J.).

Judge Kendall denied plaintiff's Fed. R. Civ. P. 59 motion for reconsideration of the Court's prior ruling (discussed in the Blog's archives) construing the claims of the patent at issue and granting summary judgment of noninfringement on behalf of defendant Ivoclar Vivadent, Inc. ("Ivoclar").  The Court denied plaintiff's motion for reconsideration because it considered each of plaintiff's reconsideration arguments in its original Opinion granting summary judgment.  But the Court spent some time on one of plaintiff's claim construction arguments regarding a patent related to porcelain veneers.  On reconsideration, plaintiff argued for a different construction of "ready for mounting."  In its original papers plaintiff did not argue for the proposed construction, although it did propose it in its Local Rule 56.1 Additional Statement of Material Facts.  The Court held that because claim construction is a matter of law, proposed constructions are not material facts and, therefore, cannot be put in LR 56.1 statements.  The Court noted its obligation pursuant to LR 56.1 to disregard legal arguments and conclusions placed in statements of fact.  The Court did, however, go on to consider plaintiff's construction and explain why the Court's original construction was correct.

Practice tip:  Think carefully about what goes into your LR 56.1 statements of material fact.  Do not put arguments in your statements of fact. And by all means, do not put arguments in your statements of fact and then omit those arguments from your brief. The Court will disregard them, and you will be out of luck. 

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Rowe Int'l Corp. v. Ecast, Inc., No. 06 C 2703, 2007 WL 1498958 (N.D. Ill. May 17, 2007) (Kennelly, J.).*

Judge Kennelly issued this claim construction opinion construing the claims of eight patents related to computer jukeboxes and computer jukebox networks.  Of particular note, the Court construed "song selection means" in USPN 5,355,302 (the "'302 patent") as a keyboard separate from a display for generating a signal representing a song selected from the set of songs stored in the jukebox.  Plaintiffs sought a construction that would include a visual touchscreen, arguing that the Court should consider the following language from an unrelated patent by the same patentee (the "'398 patent"), that was not part of the patent in suit or its prosecution history:  "song selection means displayed on said visual screen."  Plaintiffs argued that this language showed that "song selection means" could include on-screen displays.  But the Court held that considering the language was not permissible and that, even if it were, the language only showed that the inventors were capable of claiming an on-screen display, but chose not to in the '302 patent.

*  You can read more about this case in the Blog's archives.

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Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, No. 04 C 346, 2007 WL 1468630 (N.D. Ill. May 18, 2007) (Zagel, J.).

Judge Zagel construed the claims of the parties' patents, each to chewing gum containing physiological cooling agents.  The Court first construed "menthol" and "physiological cooling agent," but of particular interest was the Court's construction of "N-ethyl-p-methane-3-carboxamide."  Plaintiff/counter-defendant Wm. Wrigley Jr. Co.'s ("Wrigley") argued that the term in defendant/counter-plaintiff Cadbury Adams USA LLC's ("Cadbury") patent should be required to be at least 30% of the cooling composition of the gum based upon alleged disclaimers in the specification, as well as alleged judicial and prosecution history estoppel.  The Court stated that it was a very close issue, but held that the term was not required to make up at least 30% of the cooling composition.  The specification language relied upon by Wrigley was in the preferred embodiment and, therefore, should not be read into the claims.  And while Cadbury may have disclaimed using less than 30% of N-ethyl-p-methane-3-carboxamide in the cooling compound during both the prosecution of other patents and judicial proceedings regarding those patents, the patents had no direct relation to the patent in suit and, therefore, estoppel could not apply. 

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Vanguard Prods. Group, Inc. v. Diam USA, Inc., No. 05 C 1323, Slip Op. (N.D. Ill. May 16, 2007) (Bucklo, J.).*

Judge Bucklo granted plaintiffs summary judgment of infringement and denied defendants summary judgment of invalidity.  The Court first construed the two claim terms at issue -- "electrically coupled" and "via the modular connector."  In both cases, the Court adopted the plaintiffs' construction after a detailed review of the intrinsic and extrinsic evidence.  Because neither term was in the original application or appears in the specification, the intrinsic evidence focused on the use of the terms within the claims.  Defendants also attempted to use claim language from a parent application to support their constructions, but the Court held that the prosecution of a term in a parent application generally does not limit different terms in its progeny.  In the instant case, the Court found that the parent application had used the broader term "electrical connection" instead of "electrically coupled" which weighed against defendants' construction.  Having ruled in plaintiffs' favor on the claim construction, the Court held that defendants' products infringed the asserted claims of plaintiffs' patents.  And the Court held that defendants' asserted prior art did not anticipate plaintiffs' patents.

*  Because I beat Westlaw on this one, you can access a copy of the Court's opinion here.  Please note that the Court issued a subsequent order modifying the opinion by deleting footnotes three and four, which were not intended to be part of the opinion.

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Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 1141635 (N.D. Ill. Apr. 16, 2007) (Coar, J.).

Judge Coar granted plaintiff Abbott's motion for a preliminary injunction, after having previously denied it a TRO.*  The PI enjoined defendant Sandoz from selling a generic version of Abbott's patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL).  The Court held that Sandoz had shown a substantial likelihood of materiality and Abbott's intent to deceive the PTO  based upon Abbott's failure to disclose certain taste perversion data during prosecution.  But because Abbott abandoned the claims to which the taste perversion data was relevant of its own accord, the Court did not find the patent preliminarily unenforceable.  The Court explained its reasoning as follows:

Redemption is one of the core principles of the American ethos.  Thus in addition to being contrary to the spirit of Scribbs, Kimberly-Clark and the Code of Federal Regulation, it seems wholly inequitable to hold a patent to be invalid for fraudulent conduct in the prosecution of a claim that was withdrawn before actual prosecution had even begun.

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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, 2007 WL 611258 (N.D. Ill. Feb. 21, 2007) (Moran, Sen. J.).

Judge Moran denied plaintiff Trading Technologies ("TT") motion for clarification of the Court's claim construction or in the alternative for reconsideration (more on the claim construction and the case generally here).  TT sought clarification of the Court's construction of "static" and a correction to the Court's construction of "plurality."  The Court defined "static" relative to a "price axis" as a line that does not change position unless it is manually re-centered.  TT sought clarification as to whether a product that had a "static" "price axis" for periods of time in between automatic re-centering would fall within the definition of "static" at least for part-time infringement.  The Court denied to clarify the construction as TT requested and held that for something to be "static" it must have "a permanent lack of movement."

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Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 551579 (N.D. Ill. Feb. 20, 2007) (Moran, J.).

Judge Moran granted in part defendant's motion for reconsideration regarding the Court's construction of "binary code."  In its prior claim construction opinion -- discussed here -- the Court defined "binary code" and "trinary code generator," among other terms.  In its discussion of its "binary code" construction, the Court explained that the claims do not limit binary code to a binary number and, therefore, the term encompasses "other numerical and character languages, including trinary code."  Defendant argued that binary code could not be defined as trinary code and that, therefore, the Court should modify its construction to make clear that trinary code cannot be part of binary code.  The Court agreed with defendant that binary code cannot encompass trinary code and, therefore, clarified its explanatory sentence.  The Court explained that binary code could not include trinary code, but that it could include trinary numbers.  But because the Court's actual construction did not mention trinary code, it declined to revise the construction.

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Goss Int'l Am., Inc. v. K & M Newspaper Serves., Inc., __ F. Supp.2d __, 2006 L 3883318 (N.D. Ill. Dec. 29, 2006) (Colon, J.).

In this claim construction opinion, Judge Colon considered several issues regarding whether "means" terms were actually means plus function terms.  The patented technology at issue is "inserts" which are machines that insert advertising materials into newspapers at specific locations within the newspaper.  The Court first held that "article feeder means" was no means plus function language governed by Section 112, para. 6.  Citing the Federal Circuit's MIT v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006) decision, the Court concluded that "article feeder," like "circuitry" in the MIT case, described a known structure in the industry.  Additionally, the patent's prosecution history showed that both the examiner and the patienter understood "article feeder" to refer to a specific structure.  And dictionaries definitions of "feeder" were consistent with its use in the patent-at-issue.  Furthermore, the claims that included the term described the location of the article feeder and certain of its components, giving it structural definition.  Finally, defendant's means plus function definition failed because it sought to import structures that were not necessary to the "article feeder's" function and because certain of the structures were recited in independent claims, violating the doctrine of claim differentiation.

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Andrew Corp. v. Beverly Mfg. Co., No. 04 C 6214, 2006 WL 3486884 (N.D. Ill. Dec. 1, 2006) (Holderman, Chief J.).

In this claim construction opinion regarding several patents relating to cable hangers used for telecommunications towers, Judge Holderman refuses to limit several claim terms based upon the preferred embodiments described in the specifications.  The Court explained that "district courts should not generally rely on preferred embodiments in specifications to confine claims unless the embodiment defines the outer limit of the claim." 

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JVI, Inc. v. Universal Holdings, Inc., __ F.Supp.2d __ (N.D. Ill. Nov. 29, 2006) (Leinenweber, J.).

In this opinion Judge Leinenweber construed the claims of plaintiff's U.S. Patent No. 6,185,897 which covers an improved flange connector for precast concrete double tee members.  Of particular interest, the Court considered whether a specification including a single preferred embodiment limited the scope of the claims and discussed the claim differentiation doctrine.

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Trading Techs. Int'l, Inc. v. eSpeed, Inc., No. 04 C 5312, 2006 WL 3147697 (N.D. Ill. Oct. 31, 2006). (Moran, Senior J.)

Judge Moran issued this opinion construing the claims of the patents-in-suit after a Markman hearing.  There are two items of special note.  First, the opinion provides a thorough recitation of the claim construction standards post-Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).  Second, the Court provides further proof that claim construction is an organic process which can change througout a case, with this succinct quote:

Although our preliminary injunction construction aligned with plaintiff's view, such construction was, simply put, preliminary.

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Cummins-Allison Corp. v. Glory Ltd., __ F.Supp.2d __, 2006 WL 2931999 (N.D. Ill. Oct. 13, 2006) (Kendall, J.).

Judge Kendall performed a very thorough claim construction in this opinion, but what is most interesting about it is the procedural history.  The Court (with another judge presiding) initially construed the claims at issue in March 2005, without holding a Markman hearing.  Plaintiff then sought reconsideration regarding one of the patents at issue and defendant sought reconsideration regarding the other.  The Court ultimately granted both motions and held a Markman hearing, which is the basis of this opinion.   

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Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2006 WL 2632074 (N.D. Ill. Sept. 11, 2006) (Moran, J.)

In this claim construction opinion, Judge Moran made an interesting holding regarding the use of claim construction to resolve literal infringement issues. Defendant argued that plaintiff’s proposed constructions of “binary code” and “trinary code generator” were improperly driven by plaintiff’s infringement case. The Court noted that this was an infringement argument. The Court, therefore, would not address defendant’s argument in its claim construction opinion. This does not change my advice that you should explain why you are arguing for subtle variations of a construction. Rather, Judge Moran’s opinion illustrates that, after explaining the purpose of your proposed construction, you should be sure to ground your argument in the intrinsic and extrinsic evidence.

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Murata Mfg. Co., Ltd. v. Bel Fuse Inc., __ F. Supp.2d __, 2006 WL 2176241 (N.D. Ill. Jul. 28, 2006) (Gottschall, J.).

This detailed claim construction ruling demonstrates several useful practice tips. First:  work with opposing counsel upfront to determine which terms are actually in dispute. The parties’s initial briefing sought construction of nineteen terms, but when the Court required supplemental briefs post-Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the parties limited their briefing to only seven terms. This highlights the value of sitting down with opposing counsel before claim construction to identify the terms that are actually disputed.  Of course, this requires two reasonable parties represented by reasonable counsel, but you are better off at least trying. It is embarrassing to counsel and expensive for the client to learn, upon receiving the opposing brief, that a term that you spent hours, dollars, and valuable pages briefing is not actually in dispute. And of course, it is frustrating for the Court.

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