Albecker v. Contour Prods., Inc., No. 09 C 00631, Slip Op. (N.D. Ill. Sept. 27, 2013) (Chang, J.).
Judge Chang decided the parties’ respective Fed. R. Civ. P. 60(b) motions for reconsideration: (1) plaintiff’s motion for reconsideration of the Court’s previous claim construction order; and (2) defendant’s motion for reconsideration of the Court’s previous opinion denying defendant’s motion to dismiss the declaratory judgment count for lack of subject matter jurisdiction. Plaintiff filed affirmative patent infringement claims against defendant, as well as declaratory claims seeking to invalidate defendant’s patent. Defendant argued that the Court lacked subject matter jurisdiction to declare defendant’s patent invalid because there was no case or controversy. The Court denied defendant’s motion to dismiss. Then, during claim construction of plaintiff’s patent, the claim term “secured to” was construed to mean “attached using attachment means,” a construction that allegedly excluded a preferred embodiment disclosed in the patent’s specification.
In its motion for reconsideration, plaintiff argued that the Court’s construction impermissibly excluded a preferred embodiment disclosed in the specification. Defendant argued that this construction did not impermissibly exclude a disclosed embodiment because the intrinsic evidence supported the construction and plaintiff withdrew the claims directed to the preferred embodiment in favor of prosecuting other embodiments in response to a restriction requirement issued by the PTO. Even heeding the Federal Circuit’s cautionary warning from Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343 (Fed. Cir. 2013) to not conclude that a patentee has disclaimed claim scope simply by withdrawing claims after receiving an unexplained restriction requirement, the Court found that the bulk of intrinsic evidence supported the Court’s prior construction. Because the weight of the evidence supported the Court’s prior construction, plaintiff did not meet the burden required of a motion to reconsider.
Defendant’s motion for reconsideration of defendant’s denied motion to dismiss was granted because defendant’s actions toward plaintiff did rise to the standard required by SanDisk Corp. v. STMicroelectronics, Inc. for declaratory judgment actions. 480 F.3d 1372, 1381 (Fed. Cir. 2007) (requiring patentee to take position that “puts the declaratory judgment plaintiff in the position of either pursuing illegal behavior or abandoning that which he claims a right to do.”).
Carrier Vibrating Equip., Inc. v. General Kinematics Corp., No. 10 C 5110, Slip Op. (N.D. Ill. Sept. 27, 2012) (Dow, J.).
Judge Dow granted plaintiff Carrier Vibrating Equipment’s (“Carrier”) motion for summary judgment of validity and denied defendant General Kinematics’s cross motion for summary judgment of invalidity in this patent case related to controlling retention time of a casting on a vibratory conveyor. The Court initially construed the claim “modifying” to require automatic modification of the angle of vibratory force. That construction was critical because the parties agreed that the alleged prior art system did not allow for automatic modification of the angle of vibratory force. The Court, therefore, granted Carrier summary judgment of validity with respect to the asserted piece of prior art.
Hollister Inc. v. ConvaTec Inc., No. 10 C 6431, Slip Op. (N.D. Ill. Aug. 18, 2012) (Kennelly, J.).
Judge Kennelly construed the terms in this patent dispute regarding fecal management systems:
- “Passed through” was construed as “passed inside.”
- “An enema one-way valve” was construed as “a device that enables forward fluid flow but prevents backward fluid flow.”
- “An enema fluid one-way valve located over said internal balloon and in the colon” was construed as “the enema fluid one-way valve is located at the patient proximal end of the internal balloon.”
- “An annular supporting plate upwardly disposed” was construed to require that the annular plate was “angled toward the patient proximal end of the multipurpose colostomy device.”
- “For fixing the multipurpose colostomy device to the abdominal wall of the stoma” was construed as “[t]he annular supporting plate attaches the multipurpose colostomy device to the abdomen wall surrounding a surgically constructed opening connected to the colon or ileum.”
- “A joint tube disposed under said connecting tube” was construed as “[a] tube portion disposed under the connecting tube and used to connect to a drainage hose or a collecting container.”
- “The balloon having a proximal-most end coincident to a proximal-most first end of the first catheter section” and “the proximal-most end of the retention balloon is coincident to the proximal-most first end of the patient proximal first section of the waste catheter” were both construed as “[t]he proximal-most end of the retention balloon closest to the patient and the proximal-most end of the first catheter section closest to the patient occupy the same plane in space that is perpendicular to the longitudinal axis of the waste collection catheter, and neither of the proximal-most ends extend[s] axially beyond the other.”
- “Having an inflated size so as to be sufficiently large enough to retain the patient proximal end of the catheter into the patient’s rectum” and related terms were held not to require construction.
- “Ease of insertion” was held not to require construction.
- “Folding” was held not to require construction.
- “Flush port” was held not to require construction. The disputed language only required that the flush port allow or make possible irrigation.