SEAN F. COX, District Judge.
This is a patent infringement case. On December 6, 2011, the Court held a hearing to construe the claim terms identified by the parties as being in dispute pursuant to Markman v. Westview Instruments, 517 U.S. 370 (1996). The parties submitted written briefs in support of their positions both before and after the hearing. Through conferences with the Court's Technical Advisor, the parties were able to agree on constructions for a number of claim terms. In this Opinion, the Court will construe the six claim terms identified by the parties as being in dispute.
Plaintiffs Recticel Automobilesysteme GmbH and Recticel Interiors North America, Inc. (collectively "Recticel" or "Plaintiffs") allege that Defendant Automotive Components Holdings LLC (hereinafter "ACH") has infringed U.S. Patent No. 6,071,619, entitled "Method and Spray Mould Assembly for Manufacturing an Elastomeric Skin of at Least Two Elastomeric Materials and Elastomeric Skin." The patent generally relates to a method for molding two-color interior automotive trim parts out of plastic (such as a dashboard) that can be made to look like leather. The patent generally describes a process of covering one side of a mold with a cover, called a "mask," and spraying the other side of the mold with an elastomer of a first color. The mask is then removed and the other side of the mold is sprayed with a different color elastomer.
The patent describes a problem that existed in the prior art with the above type of molding method. When the liquid elastomer that is sprayed is in contact with both the mask and the mold surface, a problem arises when the mask is removed. As the mask is pulled away, liquid elastomer that is touching both the mask and the mold surface starts to string or form threads. As the mask is pulled farther away from the mold surface, some of the threads drop into the side of the mold that was previously covered by the mask resulting in a scrap part. As an analogy, one can think of the strings or filaments of elastomer being akin to the cheese on a slice of pizza when the slice is removed from the whole pizza. (`619 Pat. col. 2 ll. 5-7.)
The patent teaches a solution to prevent or decrease the problem of stringing or threading. The patent teaches having the edge of the mask not be in contact with the mold surface so that when elastomeric material is sprayed on the mold, the elastomeric material sprayed on the mold does not bridge or connect the surface of the mold and the mask. In other words, there is a gap or area between the edge of the mask and the surface of the mold where no elastomer is sprayed. This concept can be seen in the highlighted figures of the `619 Patent reproduced below, where the gap or area free of elastomer is shown in red. By having this design, the elastomer does not bridge or connect the mask and surface of the mold. When the mask is pulled away from the mold, threading or stringing does not occur, or is at least less likely to occur.
Claims of a patent are short and concise statements, expressed with great formality, of the metes and bounds of the patented invention. Each claim is written in the form of a single sentence. Claim construction is the manner in which courts determine the meaning of the terms in the claim. "The construction of claims is simply a way of elaborating the normally terse claim language: in order to understand and explain, but not to change, the scope of the claims." Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991).
The construction of key terms in patent claims plays a critical role in nearly every patent infringement case. Claim construction is central to both a determination of infringement and validity of a patent.
The judge, not a jury, is to determine the meaning of the disputed claim terms as a matter of law. Markman v. Westview Instruments, 517 U.S. 370 (1996).
A judge has two primary goals in construing the disputed claim terms. The first goal is to determine the scope of the patent by interpreting the disputed claim terms to the extent needed to resolve the dispute between the parties. The second goal is to provide a construction that will be understood by the jury who might otherwise misunderstand a claim term in the context of the patent specification and prosecution history of the patent. See, e.g., Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1348 (Fed. Cir. 2010) ("The terms, as construed by the court, must `ensure that the jury fully understands the court's claim construction rulings and what the patentee covered by the claims.'"); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) ("Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement."). The Court's claim construction ruling forms the basis for the ultimate jury instructions, although that is not to say that the Court cannot modify its wording for the jury instructions at a later date. See IPPV Enters., LLC v. Echostar Commc'ns Corp., 106 F.Supp.2d 595, 601 (D. Del. 2000).
The seminal case setting forth the principles for construing disputed claim terms is Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). According to Phillips, the words of the claim are generally given their ordinary and customary meaning — the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention. Id. at 1312-1313. The person of ordinary skill in the art views the claim term in context of the entire intrinsic record, which is the entire claim, the other parts of the patent, and, if in evidence, the prosecution history of the patent before the United States Patent and Trademark Office. Id. at 1313-1314. Although a claim must be construed in context of the entire patent and its prosecution history, the court should normally not read limitations or features of the exemplary and preferred embodiments discussed in the patent's written description and drawings into the claims. Id. at 1323-1324.
The prosecution history of the patent can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention during the course of prosecution by his statements, making the claim scope narrower than it would otherwise be. However, because the prosecution history is an ongoing negotiation between the patent office and the patent owner, rather than the final product of that negotiation, it often lacks the clarity of the patent itself and is generally less useful for claim construction purposes. Id. at 1317.
In discerning the meaning of claim terms, resorting to dictionaries and treatises may also be helpful. Id. at 1320-1323. However, undue reliance on extrinsic evidence, such as dictionaries, poses the risk that the dictionary definition will be used to change the meaning of claims in derogation of the indisputable public records consisting of the claims, the specification of the patent and the prosecution history, thereby undermining the public notice function of patents. Id.
In the end, the construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be the correct construction. Id. at 1316.
The parties have requested that the Court construe a number of claim terms. The Court will address each disputed claim term in the following sections.
The parties request that the Court construe the claim term "elastomeric" in Claims 1-5, 19, and 22 of the `619 Patent.
By way of example, Claim 1 states as follows with the disputed claim language underlined:
Recticel argues that this "elastomeric" should be construed as follows: "`Elastomeric' is a property of a substance such that the substance is able to approximately resume its original shape when a deforming force is removed."
ACH proposes the following construction: "Stretchable and light-stable reaction product of polyol and isocynate."
Recticel argues that ACH's proposed construction violates the rule of claim construction that preferred embodiments from the written description section of the patent should not be read into the claims. Recticel argues that "elastomeric" is a broader term than a reaction product of polyol and isocyanate and may include other types of elastomers not made from a polyol and isocyanate. Recticel points to dictionary definitions of "elastomer" or "elastic." Those related dictionary definitions include "any of various elastic substances resembling rubber;" "capable of recovering shape or size after being stretched, pressed or squeezed together;" "a natural synthetic polymer having elastic properties, e.g. rubber;" and "an elastic rubber like substance."
ACH agrees that the root "elast" in "elastomeric" or "elastomer" refers to a "stretchable property of a material." (ACH's resp. br. at 7, Dkt. No. 33.) ACH also quotes from various dictionaries that define "elastomer", for example, to mean "elastic rubber like substance" and "elastic" to mean "capable of being easily stretched or expanded and of snapping back or resuming former shape." However, ACH argues that Recticel's proposed construction for "elastomeric" is overly broad and encompasses thousands of materials with rubber like properties, while the written description of the `619 Patent describes the elastomeric material as being a light stable reaction product of a polyol and isocyanate.
The first issue that must be addressed is whether the elastomer should be limited to a "reaction product of polyol and isocynate" as argued by ACH.
In coming to the proper construction for a disputed claim term, the Court starts with the language of the claim itself. The disputed claim term "elastomeric" is used in the claims as an adjective to describe the type of materials sprayed into the mold (i.e., "elastomeric materials") and the ultimate end product (i.e., an "elastomeric skin"). The claim term "elastomeric" on its face is not limited to a reaction product of a polyol and isocyanate. The term simply describes the component materials and end product as a polymer or rubber having elastic properties (stretchable, flexible, etc.).
Next, in order to interpret the disputed claim term, the Court turns to see how the disputed claim term is used in the written description section of the patent. According to the Federal Circuit, the written description, along with the claims, "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Phillips, 415 F.3d at 1315. The written description of the `619 Patent uses the term "elastomeric" generally to refer to stretchable or elastic type of materials, but states that the typical material will be polyurethane elastomers. For example, the introductory section of the written description states:
(`619 Pat. col. 1 ll. 6-23 and col. 1-2 ll. 66-4.)
The `619 patent also discusses "elastomeric" when describing its preferred or exemplary embodiment:
(`619 Pat. col. 5 ll. 21-25.) None of the above language would signal to a person of ordinary skill in the art that the term "elastomeric" should be understood to be limited to a reaction product of a polyol and isocyanate. The above language is simply describing a preferred or exemplary embodiment of the invention.
The `619 Patent sets forth a very specific example in a separate "example" section of the patent. However, before discussing the example, the `619 Patent specifically states this embodiment is an "example" and that the "skilled person will be able to conceive many different examples" based on the teachings of the patent. (`619 pat. col. 5 ll. 42-49.) The `619 Patent then goes on to disclose the specific example. Specifically, the patent states:
(Id. at col. 5-6 ll. 65-42.) It is clear that this section of the patent is simply describing an example and is not limiting the scope of the claim to the product of a polyol and isocyanate.
The Court next turns to the prosecution history to see if the prosecution history sheds light on how a person of ordinary skill in the art would understand the disputed claim term. As Recticel points out, during prosecution, the Examiner of the United States Patent Office cited and discussed prior art references which teach using elastomers that are not a reactive product made from a polyol and isocyanate. For example, Recticel points out that the Examiner rejected the pending claims in the first Office Action mailed October 19, 1998 as obvious based on U.S. Patent No. 5,370,831 and U.S. Patent No. 5,328,723. The `831 Patent discloses spraying onto a mold surface particles selected from "any powdered thermoplastic or thermosetting polymeric material," which includes materials that are not a reactive product of a polyol and isocyanate. (`831 Pat. col. 3 ll. 40-46.) Likewise, the `723 Patent does not teach limiting the elastomer to a "reaction product of a polyol and an isocyanate." This evidence implies that the Examiner and Recticel understood that the term "elastomer" was not limited to a reactive product of a polyol and isocyanate. The Court finds that the prosecution history supports Recticel's position that the term "elastomeric" is not limited to the "reactive product of a polyol and isocyanate."
Accordingly, after considering all of the parties' arguments and the evidence presented, the Court will not limit the claim term "elastomeric" to the product of a polyol and isocyanate.
The next issue that must be addressed is whether the term "elastomeric" should be limited to "light-stable" materials. At the outset, the term elastomeric is used many times in the specification without any mention that the material must be light-stable. In support of its argument that elastomeric materials should be limited to light-stable materials, ACH points to the following statement in the written description, which describes an optional foam backing layer: "This further layer may be a light-stable elastomeric layer like the first and second elastomeric materials or it may be a not [sic] light-stable elastomeric layer." (Id. at col. 3 ll. 15-17.) ACH argues that this language, by implication, means that the "elastomeric materials" must be light-stable materials. The Court finds that this statement in the written description describes a preferred embodiment and does not intentionally limit the claim language. The Court finds that using a light-stable elastomer is a preferred embodiment, but the specification as a whole does not signal that the elastomers must be light-stable.
Accordingly, the Court adopts Recticel's proposed construction: "Elastomeric" is a property of a polymer or rubber substance such that the substance is able to approximately resume its original shape when a deforming force is removed.
The parties request that the Court construe the claim term "skin" in Claims 1-5, 19, and 22 of the `619 Patent.
By way of example, Claim 1 states as follows with the disputed claim language underlined:
Recticel argues that "skin" should be construed as follows: "the outer layer(s) of a product, including the surface, particularly for automotive trim components."
ACH proposes the following construction: "A self-supporting-layer capable of being de-molded."
Recticel argues that the `619 Patent uses the term "skin", or "elastomeric skin," to simply describe the outer layer or layers of the product. Recticel argues that ACH's proposed construction is improper and argues that ACH is trying to read a limitation or feature of the examples from the written description section of the patent into the claims.
ACH argues that its construction is correct because in order for the elastomeric skin to be removable from the mold, the outer surface layer of elastomeric materials must be thick enough to be self-supporting (i.e., "a self-supporting layer capable of being demolded"). ACH appears to be arguing that a skin layer itself must be sufficiently self-supporting so as to be removable from the mold. Under ACH's proposed construction, the claim language would not appear to cover a configuration having a thin non-demoldable outer elastomeric layer that is combined with some other non-elastomeric layer which allows the combination to be demoldable.
After considering the arguments and evidence of the parties, the Court finds that the intrinsic and extrinsic evidence as a whole does not weigh in favor of limiting the term "skin" to "a self-supporting layer capable of being demolded" as argued by ACH. The Court finds that the specification of the `619 Patent uses "skin" in a general way to describe the outer elastomeric layer(s) of the manufactured product.
According to the Federal Circuit's precedent on claim construction, in construing a disputed claim term, the Court is to start with the language of the claim itself. The Court finds that the claims use the term "skin" in a general way and do not support limiting the term "skin" to "a self-supporting layer capable of being demolded" as argued by ACH. For example, independent Claim 1 begins by stating: "A method for manufacturing an elastomeric skin with
Next, according to the Federal Circuit's rules for interpreting claim language, the Court will consider how the disputed claim term is used in the written description. The Court finds that the written description uses the term "skin" in general terms and does not limit skin to "a self-supporting layer capable of being demolded" as argued by ACH. The written description describes the invention generally as a method for manufacturing an elastomeric skin for use in interior trim components of automobiles. The written description makes clear that the elastomeric skin comprises "
(Id. at col. 1 ll. 6-23.)
Other portions of the written description make clear that the additional layers of plastic can be added to the back of the elastomeric layers and that the surface layer and the additional layers together form the skin. Specifically, the `619 Patent states:
(Id. at col. 3 ll. 11-14.) This section of the written description of the patent clearly indicates that the skin does not need to be a single layer. ACH argues that the previous above quoted section of the written description supports its argument that the molded skin must be thick enough such that it is self-supporting and can be removed from the mold. The Court disagrees. The above quoted section of the written description discusses a preferred way for making a skin, but does not define the scope of the word "skin" as being sufficiently thick that it is self-supporting and demoldable.
ACH also cites to a section of the written description entitled "EXAMPLE" to support its proposed construction. In this section of the written description, the patent sets forth a very specific example of the invention including the exact chemical formulation of the components, thicknesses of the various layers, and the method used to make the invention. In this example, the patentee makes clear that the optional additional plastic layers can be added to the back of the outer elastomeric surface layers to make the skin. Specifically, the written description states:
(Id. at col. 6 ll. 45-56.)
ACH argues that the above statements in the written description support its proposed construction because they infer that the skin must be thick enough and self-supporting so that it can be removed from the mold without damaging the skin. The Court disagrees. The Court finds that the above quoted language was not intended to limit the meaning of the term "skin." This language is an example of a particular preferred way of using the invention. Moreover, this plastic backing layer discussed in the above quoted section is set forth in dependent Claim 4 and is not required by independent Claim 1.
The Court now turns to the extrinsic evidence. ACH argues that the prosecution history of a separate Recticel European patent (EP-0379246) supports the understanding that the skin must be sufficiently thick so that it can demolded. In the prosecution history of EP-0379246, Recticel made a statement to the European Patent Office, which ACH argues shows that Recticel understood "skin" to mean sufficiently thick to be "demoldable" as opposed to a coating which is not demoldable. (ACH br. ex. G at p. 65, dkt. no. 33-8.) Although the Court has considered this extrinsic evidence and has given it the appropriate weight in the claim construction analysis, the Court does not believe that this extrinsic evidence is particularly strong. While the `619 Patent incorporates by reference EP-0379246 for a type of elastomeric material that can be used in the invention, the `619 patent does not incorporate the prosecution history of EP-0379246 to limit or define the meaning of "skin." (`619 Pat. col. 5 ll. 21-25.) See Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007) ("To incorporate material by reference the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents."). Moreover, the claim in the then pending European patent application explicitly stated that the skin is demoldable. (ACH br. ex. G at p. 67, dkt. no. 33-8.) In addition, while the `619 Patent and EP-0379246 patent were commonly owned by Recticel, the patents are otherwise unrelated, do not have common inventors, and it appears that the patent attorney who drafted the European patent is not the same. See Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 1167-68 (Fed. Cir. 2004) (holding that unrelated patents or prosecution histories are given little, if any, weight).
After carefully considering the parties' arguments and all the evidence presented, the Court finds that the term "skin" as used in the disputed claims does not need to be construed. The term "skin" as used in this automotive technology will be understood by the jury. The Court will not limit the term "skin" to a "a self-supporting-layer capable of being de-molded."
The parties request that the Court construe the claim language "plastic backing layer" in Claim 4 of the `619 Patent. Claim 4 is a dependent claim that depends from Claim 1.
Claims 1 and 4 are reproduced below. The disputed claim language is Claim 4 is underlined:
Recticel argues that the term "plastic backing layer" should be construed as follows: "Plastic backing layer means one or more layers of plastic applied to the back of the elastomeric layers."
ACH proposes the following construction: "A backing layer of foam, rigid material or elastomeric material."
Neither side fully addressed this disputed claim term in their briefs.
Two particular sections of the written description of the patent, which are reproduced below, discuss the plastic backing layer. These sections of the `619 Patent explain that after the initial surface layers of elastomeric materials are sprayed in the mold, another layer of plastic material can be sprayed or applied on the back of the first elastomeric materials. Specifically, the written description of the `619 Patent states:
(Id. at col. 3 ll. 9-25 and col 6 ll. 45-56.)
Figure 13 of the patent illustrates one embodiment of a plastic backing layer 19 that forms part of the elastomeric skin along with the first and second elastomeric layers 7 and 9.
After considering the parties' arguments, the Court finds that "plastic backing layer" does not need to be construed because this claim term will be readily understood by even a lay jury. The parties have not explained why this claim term is relevant to the infringement or invalidity arguments that may be made at trial. As the Court currently understands the issues in the case, this claim term does not need to be construed.
The parties request that the Court construe the claim language "means for maintaining . . . mask edge at a distance" in Claim 19 of the `619 Patent.
Claims 19 is reproduced below. The disputed claim language and other corresponding claim language are underlined:
Recticel and ACH agree that this disputed claim limitation is a means-plus-function claim limitation according to 35 U.S.C. § 112 ¶ 6.
Construing a means-plus function claim limitation is a two step process: (1) identify the function set forth in the claim language; and (2) identify the corresponding structure disclosed in the entire specification section of the patent that accomplishes the claimed function. Medical Instrumentation & Diagnostics Corp., 344 F.3d 1205, 1210 (Fed. Cir. 2003).
Recticel argues that the function set forth in the claim language is: "maintaining a mask edge apart from the mold surface." Recticel identifies the corresponding structure from the specification as: "Any of (1) an arm, (2) centering supports, (3) a portion of the mask projecting over an upstanding edge or (4) a curvature of the mould surface, and equivalents."
Although agreeing that this claim limitation is a means-plus-function claim limitation, ACH argues that this claim language is incapable of being construed and therefore the claim is invalid for being "indefinite" under 35 U.S.C. § 112 ¶ 2. ACH's argument appears to be that while the claim language states that the mask edge is kept apart from the mold surface, the drawings only show a mask touching the mold surface. In other words, ACH's argument is that the drawings and written description do not support or match up with the claim language. Therefore, ACH argues that the claim is invalid.
In its reply brief, Recticel argues that ACH misunderstands the claim language. Recticel points out that the claim language only requires that the mask edge, not the entire mask, be maintained at a distance from the mold surface. When the claim language is properly understood, Recticel argues that the claim is definite and valid.
To understand the parties' arguments and the claimed invention, it is helpful to look at the drawings in the `619 Patent. For example, Figure 2 is reproduced below:
Claim 19 states that the mask edge 11 is maintained at a distance from the surface of the mold 13 such as to avoid contact between the layer of said first elastomeric material sprayed onto the mold surface and the mask. The written description explains that this results in a gap being created between the mask edge and the surface of the mold where there is an absence of elastomer (shown in red in the above reproduction of Figure 2). Specifically, the written description states as follows:
Id. at col. 3 ll. 54-62.)
This disputed claim limitation is similar to a term in Claim 3 on which the parties have agreed on a construction. Claim 3 contains the term "maintained at a distance." The parties have agreed that "mask edge is maintained at distance" should be construed as follows:
(Modified Meet and Confer Agreed Constructions.)
"A determination that a patent claim is invalid for failure to meet the definiteness requirement of 35 U.S.C. § 112 ¶ 2 is a legal conclusion that is drawn from the court's performance of its duty as a construer of patent claims. . . ." Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 949 (Fed. Cir. 2007) (quotations omitted). A claim is sufficiently definite if "one skilled in the art would understand the bounds of the claims when read in light of the specification." Exxon Research & Eng'g Co. v. U.S., 265 F.3d 1371, 1375 (Fed. Cir. 2001).
The Court disagrees with ACH's arguments that this claim limitation is indefinite. ACH's argument appears to be that while the claim language states that the mask edge is kept apart from the mold surface, the drawings only show a mask touching the mold surface. (ACH br. at p. 16 ("in every figure of the `619 Patent,
The Court finds that the function set forth in the claim is the following: "maintaining said mask edge at a distance from said mold surface such as to avoid contact between the layer of said first elastomeric material sprayed onto the mold surface and said mask." (`619 Pat. col. 8 ll. 30 and col. 2 ll. 15-18.) This function identified by the Court is different than the function identified by the parties. The parties failed to include the functional claim language "to avoid contact between said layer of said first elastomeric material sprayed onto said mould surface and said mask. . . ." The Court finds that this functional language forms part of the claimed function. This additional functional language is a key part of the claimed invention.
Next, the Court must identify the corresponding structure disclosed in the written description that accomplishes the function set forth in the claim. The written description discloses two ways to maintain a distance between the mask edge and the mold surface measured along the spray direction such as to avoid having the first layer of elastomer that is sprayed on the mold surface touch the mask. First, the written description describes having the mask edge hang over an upstanding edge of the mold surface (see Figures 2 and 4-9 of the `619 Patent). Second, the written description states that the upstanding edge can be curved to create a distance between the edge of the mask and the upstanding portion of the mold (see Figure 3 of the `619 Patent). Specifically, the relevant portion of the written description states:
Id. at col. 3-4 ll. 54-2). Figure 2, reproduced above, and Figure 3, reproduced below, show examples of the structures.
Accordingly, the Court finds that the corresponding structures disclosed in the specification for performing the function set forth in the claim are: (1) where an edge of the mask projects over an upstanding edge of the mold surface such that a gap is formed between the mask edge and the surface of the mold which remains substantially free of the first elastomeric material (e.g., Figures 2 and 4-9 of the `619 Patent), or (2) where there is a mold surface having a raised edge that is curved and there is a mask located above the raised edge of the mold surface such that a gap is formed between the mask edge and the surface of the mold that remains substantially free of the first elastomeric material as shown in Figure 3 of the `619 Patent. The Court's construction is similar and consistent with the parties' agreed upon construction for the claim term "mask edge is maintained at a distance" in Claim 3.
The Court also notes that the `619 patent makes clear that the mask can be physically maintained in place by using an "arm 5, and possibly through the intermediary of centering supports 12. . . ." (`619 Pat. col. 3 ll. 30-34.) However, the parties have not made clear if the physical structure maintaining the mask surface in place above the mold surface is material to the infringement and invalidity issues at issue in this case. To the extent that this is material, the Court will address this as part of the dispositive motions or before trial if the parties bring the issue to the Court's attention.
The parties request that the Court construe the claim language "parting line" in Claim 22 of the `619 Patent.
Claim 22 is reproduced below. The disputed claim language is underlined:
This claim language makes clear that the first and second elastomeric materials are adhered to each other along a visual dividing line, called "a parting line," at a recess in the surface of the skin where the colors of the two plastic materials transition. (Id.)
Recticel argues that "parting line" in Claim 22 "means the visual border between adjacent elastomeric materials on the surface of an elastomeric skin."
ACH argues that "parting line" is incapable of being construed and is therefore indefinite. It appears that ACH's argument is that the claim term is indefinite because there is no reference numeral 23 in Figure 13 actually pointing to an example of a parting line. (ACH Resp. br. at p. 21-22.)
The Court finds that Recticel's proposed construction is correct. The parting line is described in the patent as the visual dividing line between the two colors of plastic materials. The following sections from the written description describe the parting line:
Id. at col. 1 ll. 58-65 and col. 6 ll. 57-64.) Figure 13, reproduced below, depicts the general parting line at the recess area where the first elastomer (7) and second elastomer (9) overlap or come together.
Accordingly, the Court construes "parting line" as the visual border between adjacent elastomeric materials on the surface of an elastomeric skin."
ACH argues that this claim term "parting line" is indefinite at least in part because there is no reference numeral 23 in Figure 13 actually pointing to an example of a parting line. (Resp. br. at p. 21-22.) The Court disagrees. The fact that Figure 13 does not contain a specific reference number 23 does not make the term "parting line" unclear and indefinite. A person of ordinary skill in art who has read the claim and the specification as a whole would understand the concept and limits of a parting line.
The parties request that the Court construe the claim language "gradual transition zone" in Claim 22 of the `619 Patent.
Claim 22 is reproduced below. The disputed claim language is underlined:
This claim language makes clear that the visible parting line, or dividing line, between the two colors of elastomers, occurs at "a gradual transition zone" in a recess of the elastomeric skin (Id.) This is shown in Figure 13 of the `619 Patent, reproduced below, and explained below in the following section of the written description:
Id. at col. 1 ll. 58-65 and col. 6 ll. 57-64.)
Recticel argues that "gradual transition zone" in Claim 22 "means an area between separate layers of elastomeric material on the surface of an elastomeric skin that shows a change from one material to another across the area in degrees."
ACH argues that "gradual transition zone" partly is incapable of being construed and is therefore indefinite. It appears that ACH's argument is that Figure 13 does not actually show a gradual transition from the first elastomer to the second elastomer in the recess. However, ACH is relying upon an old, incorrect version of Figure 13. The United States Patent Office issued a corrected Figure 13 in a "Certificate of Correction." This corrected Figure 13, reproduced above, shows a transition from one color of elastomer to the other elastomer in the recess at reference numeral 22. This corrected Figure 13 also provides context for the meaning of "gradual."
The Federal Circuit has held that words of degree such as "gradual" are not indefinite if a person of ordinary skill in the art would understand what was claimed. See Andrew Corp. v. Gabriel Electronics, Inc., 847 F.2d 819, 821-22 (Fed. Cir. 1988) (reversing the district court's decision that claim terms "closely approximate" and "substantially equal" were indefinite); LNP Eng'g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1359-60 (Fed. Cir. 2001) (affirming JMOL that claim limitation "substantially completely wetted" was not indefinite); Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002) (vacating summary judgment decision that claims to a hollow push rod reciting a "substantially constant wall thickness" were indefinite).
Based on the limited arguments and evidence before the Court at the claim construction stage of this case, the Court finds that a person of ordinary skill in the art who has read the claim and the specification as a whole would understand the concept and limits of the disputed claim language. Accordingly, the Court rejects ACH's indefiniteness argument.
Given the limited space in the briefs devoted this indefiniteness argument and ACH's reliance on an incorrect version of Figure 13, the Court finds that this particular indefiniteness argument would be better addressed at the summary judgment stage of the case should ACH believe that this argument needs to be revisited. However, based on the evidence presented, the Court finds that this claim language would be sufficiently understood by a person of ordinary skill in the art. See, e.g., Waddington N. Am., Inc. v. Sabert Corp., 2010 WL 4363137, at *2 (D.N.J. 2010) (holding that indefiniteness was properly deferred until the summary judgment stage of the case).
The Court construes "gradual transition zone" as "an area between separate layers of elastomeric material on the surface of an elastomeric skin where a gradual change from one elastomeric material to another occurs."
The Court will schedule a status conference on
