Header graphic for print
Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Category Archives: Claim Construction

Subscribe to Claim Construction RSS Feed

Prosecution History Requires Certain Method Steps be Performed in Order

Posted in Claim Construction

VendoNet, Inc. v. Redbox Automated Retail, LLC, No. 13 C 3475, Slip Op. (N.D. Ill. Sep. 15, 2014) (Shah, J.).

Judge Shah construed the claims in this patent dispute retarding methods of giving vending machine customers access to a computer network.  Of particular note, the Court held as follows:

  • The preamble was not limiting.  The fact that the terms “website,” “homepage,” and “database” derived antecedent basis from the preamble did not make the preamble limiting because it provided no further explanation of or limitation upon any of the terms.
  • “A plurality of physical items” was construed as “more than one item, whether or not they are of the same type.”
  • “Permitting the customer to access the Internet/world wide web via the communication network in order to retrieve and/or send information to said website, said home page or said database” did not require that the customer be able to choose his own website or “surf” the Internet.
  • The Court held that step 5 in the claimed method must occur before step 7, but that step 6 need not be sequential.  In order to overcome an obviousness rejection during prosecution, the patented stated that step 5 must occur before step 7.  Having disclaimed the two steps out of order during prosecution, patented was estopped from reclaiming the ground it lost during prosecution.

Claim Differentiation Informs Claim Construction

Posted in Claim Construction

Cumberland Pharms, Inc. v. Mylan Inst. LLC, No. 12 C 3846, Slip Op. (N.D. Ill. Feb. 26, 2014) (Pallmeyer, J.).

Judge Pallmeyer construed the claims in this patent infringement case involving an IV form N-acetylcysteine — used for treating acetaminophen overdoses.  Of particular note, the Court held as follows:

  • “Free From A Chelating Agent & “Free Of A Chelating Agent” were defined as “lacking one or more chelating agents.”  “A” in these terms limited adding chelating agents, not the existence of any chelating agent.  This was supported by dependent claims which specified chelating agents.
  • “Acetylcysteine” was defined as “the nonproprietary name for the N-acetyl derivative of the naturally occurring amino acid, L-cysteine (also known as N-acetyl-L-cysteine and NAC) and impurities associated therewith.”
  • “Stable Aqueous Pharmaceutical Composition” was defined as “a composition that exhibits minimal change over time relative to when it is manufactured,” consistent with its plain meaning.

Court Construes Distributed Data Storage Patents

Posted in Claim Construction

Cleversafe, Inc. v. Amplidata, Inc., No. 11 C 4890, Slip Op. (N.D. Ill. May 20, 2014) (Lee, J.).

Judge Lee construed the disputed claim terms of the patents in this patent dispute regarding distributed data storage systems.  Of particular note, the Court held as follows:

  • “Data slice” and “plurality of data slices” was construed as “data slice” to mean a “data structure consisting of a data subset and a coded value.”  Defendant Amplidata’s narrower construction was required by plaintiff Cleversafe’s amendments during prosecution.
  • “Virtual digital data storage vault” was construed as “software construct stored over multiple slice servers.”
  • The parties agreed that a vault is a “software container” and that it is “stored over more than one slice server.”  The dispute was whether a vault must be associated with user accounts.  The Court held that a vault need not be associated with a user account.  The patents’ specification only stated that vaults “may” be associated with user accounts.
  • “Encode, using a coding algorithm, a plurality of subsets of data to create a plurality of coded values” was construed as “encode, using a coding algorithm, n subsets of data to create n coded values.”  The Court’s construction was broad enough that it was not limited to the preferred embodiments, while creating a one-to-one relationship between data subsets and coded values.
  • “Information dispersal algorithm” was construed as “an algorithm capable of assembling a file from data slices and creating new data slices from a rebuilt file.”
  • “String(s) of data” did not require construction beyond its plain and ordinary meaning.
  • “List of unusable storage nodes” was construed as “list of storage nodes that have been rendered permanently unusable.”
  • “The request is valid” and “the request is invalid” did not require construction.
  • “Supports” was construed as “provides access to.”

Failing to Offer Construction for Indefinite Term Can Leave a Court “at Sea”

Posted in Claim Construction

Saro Golf, Inc. v. Nike, Inc., No. 08 C 1110, Slip Op. (N.D. Ill. Sep. 9, 2013) (Chang, J.).

Judge Chang clarified the claim constructions in this patent case regarding an improved golf club head.  “Radius of curvature” was previously construed to mean “radius of a substantially circular curve of a substantial portion of the back side profile shape.”  This construction presumed that each of the heel and toe of a club head had a profile that was “circular in profile” meaning that it was largely made of a single radius.  Neither party had sought a construction limiting the profile to one composed of a single radius, nor did they address the construction at the claim construction hearing.

The Court considered the parties’ briefs and the intrinsic evidence, but could not “square” the construction with the evidence because:

  1. The single radius requirement read one of the preferred embodiments out of the claim.
  2. The construction was a “mouthful” and did not make sense grammatically within the asserted claim 7.  It is good to see courts concerned with making claims that could go to a jury more reasonable and understandable, although it may be a nearly impossible task.
  3. The prior construction was based upon the faulty premise that a radius of curvature could only be a circle.  In fact, it is a mathematical term that can be applied to any curve.

The Court, therefore, held that the Radius of Curvature was an average measure along a complex curve, and the issue was where it was measured from.  The Court ordered further briefing on the issue because neither party fully addressed it.

The Court also upheld the prior constructions of “Heel” and “Toe” of the club.  In doing so, the Court cautioned defendants to strongly consider offering alternative constructions when arguing terms were indefinite to avoid leaving the Court “at sea” should indefiniteness be denied.  The Court acknowledged that offering a construction could weaken the indefiniteness argument, but pointed out that courts regularly handle arguments in the alternative.

Claim Constructions Rely Upon Specification and Dictionary

Posted in Claim Construction

Bobel v. MaxLite, Inc., No. 12 C 5346, Slip Op. (N.D. Ill. Feb. 5, 2014) (St. Eve, J.).

Judge St. Eve construed the disputed terms in this patent litigation related to compact fluorescent lamps.  Of particular note, the Court held as follows:

  • Resonate Boosting Circuit was construed as “a circuit comprising (i) boosting inductance connected in circuit between the AC input terminals and (ii) boosting capacitance, comprising one or more capacitors, connected in parallel with selected one or more diodes of the rectifier circuit.”
  • Power Line Voltage Rectifier was construed as “a device that converts the AC signal from an alternating voltage source into a pulsating DC signal at the output of the rectifier, with such device including at least two diodes, each of which connects on one side to the AC power line.”
  • Integrated Into was construed as “physically combined into.”
  • A Resonant Boosting Circuit Integrated Into the Power Line Voltage Rectifier was construed as “a circuit operable to provide between the DC terminals a variable DC voltage having an absolute peak magnitude higher than the absolute peak magnitude of a rectified voltage of the alternative voltage source, and the resonant boosting circuit comprising: (i) boosting inductance connected in circuit between the AC input terminals and the alternating voltage source, and (ii) boosting capacitance comprising one or more capacitors connected in parallel with one or more unidirectional devices of the rectifier circuit.”  Because the term was a combination of the previously construed terms, the term was construed consistent with those constructions.
  • Parallels was construed as “of or denoting electrical components or circuits connected to common points at each end, rather than one to another in sequence.”  This construction was based upon a dictionary definition.

The Court helpfully closed its opinion with a chart listing its constructions.

Intrinsic Evidence Supported Claim Construction That Excluded a Preferred Embodiment

Posted in Claim Construction, Federal Rules

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.”).

Claim Construction Knocks Out Prior Art

Posted in Claim Construction, Summary Judgment

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.

Court Construes Fecal Management System Claims

Posted in Claim Construction

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.

Reconsideration Requires New Arguments or Facts

Posted in Claim Construction

AmTab Mfg. Corp. v. SICO Inc., No. 11 C 2692, Slip Op. (N.D. Ill. Aug. 13, 2012) (Darrah, J.).

Judge Darrah denied plaintiff AmTab’s motion for reconsideration of the Court’s prior claim construction order.  While claim construction is an organic process that can be revised throughout a case, AmTab did not present any new arguments.  Even the new construction relied upon old arguments.  The Court, therefore, denied the motion. 

Court Construes Pharmaceutical Terms

Posted in Claim Construction

The Medicines Co. v. Mylan Inc., No. 11 C 1285, Slip Op. (N.D. Ill. Aug. 6, 2012) (St. Eve, J.).

 Judge St. Eve construed the claims in this patent case related to bivalirudin.  Of particular note:

  • “Pharmaceutical Batches” was construed as “may include a single batch, wherein the single batch is representative of all commercial batches (see generally, Manual of Policies and Procedures, Center for Drug Evaluation and Research, MAPP 5225.1, Guidance on the Packaging of test Batches at 1) made by a compounding process, and wherein the levels of, for example, Asp9 -bivalirudin, total impurities, and largest unknown impurity, and the reconstitution time represent levels for all potential batches made by said process.  ‘Batches’ may also include all batches prepared by a same compounding process.”
  •  “Efficiently Mixing” was construed as “a pH-adjusting solution and the first solution are mixed not using inefficient mixing conditions such as described in Example 4.”

As usual, the Court very helpfully provided a glossary of constructions at the end of the opinion.  Hopefully, this is a practice every judge will adopt.


Term Used as an Adjective in Specification Required Constructive When Used as Verb in Claims

Posted in Claim Construction

Fujitsu Ltd. v. Tellabs Ops., Inc., No. 09 C 4530, Slip Op. (N.D. Ill. Jul. 27, 2012) (Holderman, C.J.).

Chief Judge Holderman construed an additional claim term - “transmitting” - one month before trial in this patent involving optical transmission systems.  “Transmitting” was used as an adjective modifying “terminal,” and as a verb describing what a terminal did.  Constructing “transmitting” as an adjective was unnecessary because it was used throughout the patent and one of ordinary skill would have understood the meaning.  But “transmitting” was only used as a verb in the claims, warranting construction.  “Transmitting” was construed to mean “engaged in the transmission of.”  The Court declined to construe terms that were not in the claims to be tried in one month.

Court Construes Terms in Folding Table Patent Case

Posted in Claim Construction

AmTab Mfg. Corp. v. SICO, Inc., No. 11 C 2692, Slip Op. (N.D. Ill. March 29, 2012) (Darrah, J.).

Judge Darrah construed the disputed terms of the patent in suit related to a stool attaching to a folding table.  Of particular note, the Court held as follows:

  • “An elongate seat post having a substantially uniform cross section mating with the support mount” was construed as “a seat post with an unvarying or nearly unvarying cross section for the entire length of the seat post mating with the seat mount.”
  • “An at least substantially vertical extent of the seat post having a noncircular cylindrical surface” was construed as “the portion of the seat post that is vertical or nearly vertical has a noncircular cylindrical shape for the entire length of that portion.”
  • “[A]t least partially inserted into the other noncircular cylindrical surface” did not require construction, its ordinary meaning was clear.
  • “[A]ligned non-circular cylindrical surfaces” did not require construction, its ordinary meaning was also clear.

Special Master Order Not Extended for Complex Summary Judgment

Posted in Claim Construction

Bergstrom, Inc. v. Glacier Bay, Inc., No. 08 C 50078, Slip Op. (N.D. Ill. Mar. 9, 2012) (Kapala, J.).

Judge Kapala accepted a Special Master’s claim constructions with some modifications in this case involving heating and cooling systems for over-the-road trucks.  The Court made the following holdings of particular note:

  • “Minimum speed” meant “a minimum non-zero operating speed.”  The intrinsic and extrinsic evidence did not allow for zero to be included as a minimum speed.
  • “Life of the Battery” meant “remaining life of the battery until it needs to be recharged in order to serve its intended purpose.”
  • “Air Conditioning System” meant “a system for controlling, especially lowering, the temperature of an enclosed space.”
  • “A Vehicle Air Conditioning System” meant “a vehicle air conditioning system capable of providing air conditioning when the vehicle engine is on and off.”
  • “Air Conditioning System Temperature” meant “a temperature of the refrigerant system used in the air conditioning system.”
  • “First Speed” meant “a non-zero speed.”
  • “Second Speed” meant “second non-zero speed different than the first speed.”

Finally, the Court denied defendant Glacier Bay’s motion to extend the order of reference to the special master.  Because plaintiff Bergstrom did not consent to extend the order allowing the special master, Glacier Bay had to show exceptional conditions warranting the extension.  Bergstrom’s arguments that complex and voluminous summary motions were not exceptional.


Mini-Markman Used to Streamline Patent Case

Posted in Claim Construction

Magna Carta Holdings, LLC v. Nextgen Healthcare Information Sys., Inc., No. 08 C 7406, Slip Op. (N.D. Ill. Mar. 9, 2012) (Kendall, J.).

Judge Kendall construed a key term in this patent litigation – the Comparator Term – after the parties each acknowledged that the Comparator Term’s construction would likely resolve the case.  The Court construed the Comparator Term before the full claim construction process, similar to the “Mini-Markman” process that Chief Judge Davis had been employing to great effect in the E.D. Texas.

The Court construed the Comparator Term as follows:

A software tool or data structure that examines one thing to see if it is analogous to a second thing, the two things being: (1) predetermined code words, numbers or symbols recorded on a physical or electronic form; and (2) a longer written description of medical information assigned to the particular code word, number or symbol.  The comparator does not, by itself, decode the predetermined code words, numbers or symbols into the longer written descriptions of medical information.

The Court ordered that the parties meet and confer regarding any additional proceedings necessary in light of the Court’s construction.

Apple v. Motorola: Judge Posner Further Narrows Case by Summary Judgment

Posted in Claim Construction, Summary Judgment

Apple Inc. v. Motorola, Inc., No. 11C 8540, Slip Op. (N.D. Ill. Jan. 16, 2012) (Posner, J. sitting by designation).

In light of the upcoming trial of this case – in stages beginning with liability on June 11, 2012 – and the interest because of both the high profile parties and the fact that Seventh Circuit Judge Posner is presiding over the case, I am going to go out of order and profile a significant number of opinions from this case during June.

Judge Posner granted in part and deferred portions of plaintiffs (collectively “Apple”) and defendants (collectively “Motorola) motions for summary judgment in this patent dispute involving various cell phone technologies.  Here are key rulings:

  • Motorola granted summary judgment of noninfringement re RE 39,486 and U.S. Patent Number 5,929,852.  The ‘486 and ‘852 patents taught network components.  Apple did not show that Motorola’s Android Runtime layer allowed for replacement of meaningful components.  It was not enough that Apple’s expert had replaced components on his phone because he provided no reason that a typical user, or any user, might do so.
  • Motorola denied summary judgment of noninfringement re U.S. Patent Number 5,519,867.  The ‘867 patent taught an apparatus for allowing incompatible applications and operating systems to communicate.  A clash of experts over whether Motorola’s two-step system involving a virtual machine read on the claims created a question of material fact precluding summary judgment.
  • Motorola denied summary judgment of noninfringement re U.S. Patent Number 6,493,002.  The ‘002 patent taught aspects of toolbar buttons within an operating system or application.  Motorola’s status window could not infringe the ‘002 patent, but there was a question of fact as to whether its notification window infringed.
  • The Court construed the terms of Apples U.S. Patent No. 6,343,263.  The ‘263 patent taught real time processing of serial data.  The Court held that “Realtime application program interface (API)” need not have a different construction than “application program interface (API).”  And the Court construed “realtime application program interface” to mean an “API that allows realtime interaction between two or more subsystems.”

Having ruled on multiple summary judgment motions, the Court noted that the following patents were still asserted:

  • Apple patents:  ‘002, ‘263, ‘337, ‘354, ‘647, ‘867 & ‘949
  • Motorola patents:  ‘516, ‘559 & ‘898.

Flameless Candle Terms Construed

Posted in Claim Construction

Winvic Sales, Inc. v. Valuevision Media, Inc., No. 09 C 7807 Slip Op. (N.D. Ill. Oct. 14, 2011) (Guzman, J.).

Judge Guzman construed the claim terms in this patent case involving flameless candles. Of particular note, the Court held: 

  • The Court adopted defendant’s (“ShopNBC”) constructions of “upper portion” and “lower portion” because plaintiff Winvic waived its arguments by failing to propose claim construction.
  • "The upper portion having a concave surface defining a recess therein” was construed as “the upper portion of the candle-like like body having a surface that is hollowed inward or rounded inward, regardless of whether the inward shape has curved or square edges, and thereby defining a recess therein.”
  • “Substantially in the recess” was construed as “a considerable degree within the limits of the recess.”
  • "Chamber" was construed as "a confined space."

Court Finds Claim Preamble Limiting

Posted in Claim Construction

The Metraflex Co. v. Flex-Hose Co., No. 10 C 302, Slip Op. (N.D. Ill. Sep. 8, 2011) (Leinenweber, H.).

Judge Leinenweber construed the claims of the patent related to displaying a product selection on a website. Of particular note:

  •  “Using a computer program via a global computer network comprising the steps” was construed as “performing each step of the method in the computer program via a global computer network.” While preambles generally are not limiting, this language was necessary to give “life, vitality and meaning to the claimant[s] and, therefore, was limiting.
  • “Steps” was defined as requiring that the steps be performed in sequential order. Logic required that the steps be performed sequentially and the specification supported the sequential requirement.
  •  “Selecting” was construed as “to choose or make a choice, including moving a cursor into a box or area of the computer display screen containing depictions of fittings/features, which causes control to pass to an additional step.”
  • “Permutation” was construed as “a visually perceptible structural variation or visually perceptible variation affecting the operating characteristics, specifications, or functionality of the product.”
  • “Fitting” was construed as “a visually variable structural feature of a product or visually perceptible variation affecting the operating characteristics, specifications, or functionality of the product.”
  •  “Generating a composite image of said selected product” was construed as “a computer processor carrying out the instructions of a computer program, taking into account the user’s selection input steps, to create a composite image.” The claims were not step-plus function claims because they did not use “step for” language and because “generating” contained an act.

Doctrine of Equivalents Improper Where it Vitiates Claim Element

Posted in Claim Construction

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.

Court Reconstrues “Cooking Enclosure”

Posted in Claim Construction

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.

“The Allergens” Requires All Allergens Not Just One or More

Posted in Claim Construction

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.

Court Refuses “Back Door” Attempt at Claim Construction

Posted in Claim Construction

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.

Court Will Not Import Limitations From the Specification

Posted in Claim Construction

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.

Court Reevaluates Claim Constructions from Prior Related Case

Posted in Claim Construction

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."

Federal Circuit’s Claim Constructions Control in Remanded Patent Case

Posted in Claim Construction

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.