JOSEPH N. LaPLANTE, District Judge.
This is a dispute over the construction of the claims of a patent for a vibration switch, United States Patent No. 6,706,979 (filed Mar. 16, 2014). The plaintiff, SignalQuest, Inc., commenced this action by way of a complaint for a declaratory judgment that its products do not infringe the '979 patent, owned (at that point) by defendant Ten-Ming Chou. Chou, who is also the patent's named inventor, responded with a counterclaim alleging that certain SignalQuest products, including its "SQ-SEN-200 model number vibration switch," in fact infringe the '979 patent.
The parties differ over the meaning of a number of terms as they appear in the only independent claim of the '979 patent, claim 1, as well as certain of its dependent claims. The court received briefing and conducted a hearing on this issue in accordance with
The meaning of language in a patent claim presents a question of law for the court to decide.
Yet "[w]hen consulting the specification to clarify the meaning of claim terms, courts must take care not to import limitations into the claims from the specification."
The '979 patent teaches "a vibration switch which can be instantly disposed in a switch-off state when jerked by a force coming from any direction." The invention consists of "two electrically conductive rollable bodies which abut against two tangential areas of two electric contact bodies to establish electric contact between the electric contact bodies, and which will lurch toward a farthermost area of a respective one of the electric contact bodies when the vibration switch is in an unsteady state so as to break the electric contact."
The patent consists of one independent claim, to wit:
As noted at the outset, the parties differ over the meaning of a number of terms as they appear in claim 1 (and, in some cases, of certain dependent claims) of the '979 patent. The court resolves those disputes as follows.
The patent claims "[a] vibration switch adapted to be in electric contact with a support, comprising," among other elements, "a housing adapted to be mounted on the support in an upright direction." SignalQuest argues that this means "an integrally formed extension of the housing itself mounts on the support," i.e., "[t]here is no separate and removable item connecting the housing to the support." But the defendants disagree, arguing that "adapted to be mounted" means simply "capable of mounting." The court agrees with the defendants.
Claim 1's teaching that the "housing [is] adapted to be mounted on the support" does not, as SignalQuest argues, necessarily "mean[] that there is a physical limitation to the housing itself"—as opposed to a structure that is added to but remains separable from the housing—to accomplish the mounting. There is nothing inherent in the phrase "adapted to" that requires an alteration of, rather than an addition to, that which existed prior to the adaptation.
As the Court of Appeals for the Federal Circuit has observed, "[i]n common parlance, the phrase `adapted to' is frequently used to mean `made to,' `designed to,' or `configured to,' but it can also be used to mean `capable of' or `suitable for.'"
SignalQuest also points to the section of the specification that describes the first preferred embodiment of the invention, in which "[t]he housing is made from an electrically conductive material, and is adapted to be mounted on a support." In particular, this section of the specification teaches, a "first electric terminal is integrally formed with the left end portion of the housing, and has a connected end connected to the first electric contact body, and a terminal end extending from the connected end outwardly and downwardly of the left end portion to be in electric contact with the support."
As an initial matter, this argument appears to "confuse exemplars or preferred embodiments in the specification that serve to teach and enable the invention with limitations that define the outer boundaries of claim scope," which is impermissible.
The specification, then, explicitly discloses preferred embodiments in which the housing connects to the support by way of a terminal extending from a "separable" contact body—as opposed to the "integrally formed" terminal disclosed in the embodiments on which SignalQuest relies. So construing the claim to exclude any "separate and removable item connecting the housing to the support," as SignalQuest urges, would exclude two of the preferred embodiments disclosed in the patent—as SignalQuest acknowledges. And "[a] claim construction that excludes [a] preferred embodiment `is rarely, if ever correct.'"
Of course, "rarely" does not mean "never," and, at the hearing, SignalQuest pointed to a few cases where the Court of Appeals for the Federal Circuit has construed a patent to exclude one of its preferred embodiments.
Finally, SignalQuest's proposed construction of the phrase "adapted to be mounted" in claim 1 would also read a limitation into it which is expressly spelled out in one of its dependent claims. Specifically, claim 7 discloses (by reference to other claims) the same vibration switch as claim 1, except that (in addition to other limitations) "said housing is made from an electrically conductive material and said first electric contact body and said first electric terminal are
SignalQuest argues that "the doctrine is not implicated because the challenged limitation . . . is not the only meaningful difference between the two claims." In particular, SignalQuest asserts, claim 7 includes an additional limitation, beyond the "integrally formed" terminal and housing, i.e., that the housing be "electrically conductive." As discussed in more detail below, however, SignalQuest also proposes to read that very same limitation into claim 1.
SignalQuest also argues that the doctrine of claim differentiation is not "a hard and fast rule." That is correct: as already noted, the doctrine simply creates a presumption against arriving at the same construction for differently worded claims.
While both SignalQuest and the defendants agree that the term "housing," as it appears in claim 1, means "enclosure," they disagree on whether the enclosure must also be "electrically conductive." SignalQuest insists that it must, relying principally on the fact that—in teaching the first preferred embodiment of the invention—the specification describes the housing as "made from an electrically conductive material." Again, however, the court must guard against reading limitations from the specification's teaching of a preferred embodiment into the claims themselves.
But neither must the court ignore the specification in construing the claims,
In any event, the specification in fact discloses preferred embodiments (namely, the third and fourth) in which the electric contact bodies, which are "separable" from the housing, have terminals that extend through insulating plugs before bending "downwardly of the housing to be in electric contact with the support." As the defendants explain, this configuration allows current to flow through the contact bodies (and, when the switch is in the "on" position, the electrically conductive rollable bodies) and terminals to the support and, as such, eliminates any need for the body of the housing to be electrically conductive.
SignalQuest does not dispute this point, which serves to show that, in fact, the specification discloses embodiments in which the housing need not itself be electrically conductive. SignalQuest has provided no basis, then, for reading into claim 1 the requirement that the housing be "electrically conductive." In addition, as already discussed, claim 7 specifically describes a switch "wherein said housing is made of electrically conductive material," so adopting SignalQuest's proffered construction of "housing" (at least while also adopting its proffered construction of "adapted to be mounted") in claim 1 would result in an independent claim with the same scope as one of its dependent claims—a disfavored result.
The parties also dispute the proper construction of claim 1's teaching that the housing "includ[es] an upper wall and a lower wall spaced apart from each other in the upright direction to confine an accommodation chamber." SignalQuest argues that the accommodation chamber must be "confined by an upper wall and a lower wall spaced apart from each other in the upright direction, a left end portion, and a right end portion." The defendants argue that the "accommodation chamber" is merely "a space with walls," eliminating any need for the "left end portion" and the "right end portion" urged by SignalQuest.
As support for their reading, the defendants rely on the language of claim 1, which, as just quoted, discloses "an upper wall and a lower wall spaced apart from each other in the upright direction" as the elements that "confine an accommodation chamber"—without mentioning any right end or left end portion. This argument, however, ignores the import of the term "chamber" itself, which is not ordinarily used to describe a space confined by only two walls (or at least two walls that are "spaced apart from each other" so that they do not intersect). To the contrary, "[t]he plain and ordinary meaning of chamber is an enclosed space or cavity."
Based on the plain and ordinary meaning of the word "chamber," then, the court rejects the defendants' proffered construction of the term "accommodation chamber" as simply "a space with walls." Instead, the court adopts SignalQuest's proposal that the term means "a chamber confined by an upper wall and a lower wall spaced apart from each other in the upright direction, a left end portion, and a right end portion."
This reading gains additional support from the specification, which, in discussing the first preferred embodiment, teaches that "[t]he housing has an upper wall and a lower wall spaced apart from each other in the upright direction, a left end portion which is integrally formed with the upper and lower walls, and a right end portion which is configured as an insulating plug that is fitted into an opening end cooperatively defined by the upper and lower walls,
Furthermore, the other preferred embodiments disclosed in the specification do not teach any configuration of the accommodation chamber that excludes end portions. The third preferred embodiment, in fact, features an "insulating plug [that] is provided to be fitted into an opening end of the housing
Claim 1 teaches that, in addition to the housing, the vibration switch is comprised of "first and second electric contact bodies which are disposed in said accommodation chamber." SignalQuest argues that this phrase requires the electric contact bodies to be "entirely located within the accommodation chamber," while the defendants argue that the bodies need only be "at least partly inside the accommodation chamber." The defendants have the better argument.
As an initial matter, the plain and ordinary meaning of the phrase "disposed in" does not require its subject to be "entirely located"—or, it might be said, "subsumed"—within its object. The plain and ordinary meaning of "disposed in" is simply "placed in." Indeed, elsewhere in the patent, the term "disposed in" is used in this sense: the "summary of the invention" section of the patent teaches that the "switch is adapted to be disposed in electric contact with a support." There is, of course, a "general requirement that claim terms be construed consistently throughout a patent."
SignalQuest argues that, regardless, "[n]owhere in the specification or figures is the concept of the electric contact bodies being partly located within the accommodation offered or suggested." Again, though, it is the claims, not the specification and its illustrations, that define the scope of the invention.
Claim 1 further teaches that the aforementioned first and second electric contact bodies
The parties dispute the meanings of a number of terms from this description of the contact bodies. In essence, SignalQuest reads the description to exclude the "tangential areas" from the "rolling surfaces" such that "[t]he first and second rolling surfaces define outer perimeters that border the first and second tangential areas respectively."
The text and structure of the claim language support the defendants' proffered construction. As an initial matter, "tangential" is commonly and ordinarily used to refer to a spatial relationship in which forms touch at their peripheries, or outer edges. To describe an "area" as tangential to a "surface," then, indicates that the surface and the area share some space in common and, as a consequence, are not entirely distinct. Indeed, claim 1 states that the first and second rolling surfaces "respectively defin[e] first and second tangential areas." One would not normally speak of a surface "defining" an area yet remaining entirely distinct from it. While, as SignalQuest points out, "defining a border of a thing. . . defines the limits of that thing," it does not follow that what defines the border remains separate from the area defined. In any event, claim 1 does not say that the rolling surfaces "define the borders"—or, to quote from SignalQuest's proffered construction, "define outer perimeters"—of the tangential areas, but simply that the surfaces "defin[e]" the areas themselves. "[A]n analysis that adds words to the claim language without support in the intrinsic evidence . . . does not follow the standard canons of claim construction."
SignalQuest argues that the intrinsic evidence, namely, the illustrations, in fact supports reading "rolling surfaces" to exclude the tangential areas. It is true that, in several of the cross-sectional figures, the "tangential area" is labeled as a segment of the contact body shown at a right angle to the semicircular curve labeled as the "rolling surface." But it is far from clear from the cross-sectional drawings whether the labeling of each respective rolling surface and tangential area excludes the point at which they touch—which, in a three-dimensional rendering, would form an entire ring that is unaccounted for in SiganlQuest's attempt to divide the contact body into a rolling surface and a tangential area. The configuration in the drawings, moreover, is nowhere described in the text of the patent, either in the specification or, more importantly, the language of claim 1 itself (which, again, states simply that the rolling surfaces "define" the tangential areas). And "the mere fact that the patent drawings depict a particular embodiment of the patent does not operate to limit the claims to that specific configuration."
SignalQuest also relies on claim 1's teaching that, "when the support on which [the] housing is mounted stands still, [the] first and second electrically conductive rollable bodies . . . respectively abut against [the] first and second tangential areas by virtue of gravity." Because "`[a]but against' is not the same as `roll on,'" SignalQuest argues, it follows that the rolling surfaces exclude the tangential areas. As the defendants point out, however, when the switch becomes unsteady, each rollable body necessarily begins to "roll" at the point where it is at rest when the switch is in a steady state. The fact that the bodies "abut" the tangential areas, then, does not support SignalQuest's effort to read claim 1 to segregate those areas from the rolling surfaces.
In sum, the text and structure of claim 1 do not support SignalQuest's proffered construction of "tangential areas" as "not being part of the rolling surfaces" or "rolling surfaces" as "not including the tangential areas." To the contrary, the plain and ordinary meaning of those terms, as used in the claim, aligns with the defendants' proffered construction: "tangential areas" means the areas of the rolling surfaces contacted by the rolling bodies when the rolling bodies touch, and "rolling surfaces" means the surfaces on which the rolling bodies roll.
Again, claim 1 states that the "first and second rolling surfaces respectively defin[e] first and second farthermost areas which are spaced apart from each other by a first length along a centerline." The claim further teaches that
SignalQuest argues that each "farthermost area" is "the point of the [respective] rolling surface that is furthest from the [opposite] rolling surface and furthest from [the same] surrounding region" (e.g., the "first farthermost area is the point of the first rolling surface that is furthest from the second rolling surface and furthest from the first surrounding region"). But the defendants argue that the farthermost areas are simply the "[a]reas where the bodies are spaced apart."
The plain and ordinary meaning of "farthermost" is simply "farthest," as in "most distant." Because, again, claim 1 states that the first and second rolling surfaces "respectively defin[e] first and second farthermost areas which are spaced apart from each other by a first length along a center line," the description of those areas as "farthermost" indicates that they are, as SignalQuest suggests, the area of each rolling surface that lies at the greatest distance from the other. But the claim language does not fully support SignalQuest's proffered construction of "farthermost area" as "the point of the [respective] rolling surface that is furthest from the [opposite] rolling surface," because an "area," by definition, is not a "point."
The court agrees with SignalQuest, however, that the defendants' proposed construction of "farthermost areas" as merely "areas where bodies are spaced apart" does not quite do the trick either. Again, claim 1 teaches that the first and second electric contact bodies "have first and second rolling surfaces that are spaced apart from each other along a centerline," but that these rolling surfaces in turn "define first and second farthermost areas which are spaced apart from each other by a first length along the centerline." Claim 1 goes on to state that the "sum of the first width and the second widths" of the rollable bodies is "smaller than the first length and larger than the second length" (the "second length" is the distance between the tangential areas "when projected on a longitudinal line in a longitudinal direction"). It follows that the farthermost areas are not merely the "areas where the [electric contact bodies] are spaced apart," but where they are spaced apart by the "first length." This construction receives additional support from the only figures from the patent that label the farthermost areas: those figures place the farthermost areas at either end of the first length.
"In construing a patent, this court's `task is not to decide which of the adversaries is correct' in its proffered interpretation, but to fulfill the court's `independent obligation to determine the meaning of the claims, notwithstanding the views asserted by the adversary parties.'"
As already noted, dependent claim 7 (as well as dependent claim 10) disclose a switch wherein the "first electric contact body and [the] first electric terminal are integrally formed with [the] housing."
As the defendants point out, the plain and ordinary meaning of "integral" is simply "formed as a unit with another part," as the Court of Appeals for the Federal Circuit has recognized.
As also already noted,
The language of dependent claim 3 clearly describes the "surrounding regions" as "exten[sions]" of the tangential areas beyond their definitions as set forth in independent claim 1. Accordingly, if SignalQuest means by its proffered construction that the surrounding regions are the same as the tangential areas, then that construction cannot be correct. In the few sentences of its briefing that it devotes to its proffered interpretation of "tangential areas," SignalQuest does not identify any support for it—aside from references to one of the drawings, a cross-section view which does not separately identify the "surrounding regions" and would therefore appear irrelevant to their proper definition. In accordance with the plain language of claim 3, then, the court construes "surrounding regions" as extensions of the tangential areas that surround the centerline.
For the reasons set forth above, the court adopts the foregoing constructions of the disputed claim terms.
June 27, 2006), 7,326,866 (filed Feb. 5, 2008), and 7,326,867 (filed Feb. 5, 2008), were the subject of reexamination proceedings before the United States Patent and Trademark Office filed after the commencement of this action. Based on the pendency of those proceedings, the court had stayed litigation of SignalQuest's patent infringement claims here, but decided that litigation of its claim for a declaration of non-infringement, and Bravotronics's corresponding infringement claim, should proceed. Order of Apr. 29, 2014. Accordingly, this order addresses the construction of the '979 patent only, with construction of the other patents—which survived reexamination— to await a later stage in the case, if necessary.
