AUDREY G. FLEISSIG, District Judge.
This matter is before the Court on the parties' cross motions for the construction of certain patent claim terms, pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). For the reasons set forth below, the parties' motions will be granted in part and denied in part.
This patent case is about swimming pool vacuum cleaners. Plaintiffs are Water Technology, LLC and Water Tech. Corp. ("Water Tech"), maker of the Pool Blaster, Catfish, Leaf Vac, and Aqua Broom pool vacuums. Defendants are Kokido Development Limited, maker of Telsa and Vektro pool vacuums, and retailer Menard, Inc. Water Tech filed a complaint asserting that Kokido's products, sold by Menard, infringe five Water Tech patents. Defendants filed a counterclaim seeking declaratory judgment of non-infringement and invalidity. Water Tech dismissed its infringement claims with respect to two patents. The remaining patents in suit are: (1) U.S. Patent No. 6,939,460, titled Portable Electric Pool Cleaner, issued September 6, 2005 (the '460); (2) U.S. Patent No. 7,636,975, titled Pool Vacuum, issued December 29, 2009 (the '975); and (3) U.S. Design Patent No. D556,396, titled Pool Vacuum, issued November 27, 2007 (the 'D396). Patents '460 and '975 are utility patents for hand-held, battery-powered, submersible pool cleaners. The 'D396 is a design patent for a particular ornamental design for a pool cleaner. Kokido's accused products are also hand-held, battery-powered submersible pool cleaners.
The parties have submitted claim construction briefs and a joint claim construction chart. On November 28, 2018, the Court held a hearing at which the parties presented arguments and Water Tech offered the expert witness testimony of Mr. David Peterson. As discussed below, Defendants seek construction of seven claim terms of the '460 and six terms of the '975. Plaintiffs submit that the Court need only construe three terms in the '460 and two in the '975, leaving the rest to their plain meaning.
A district court need not construe every claim term challenged by a party. Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1206-07 (Fed. Cir. 2010). Where the plain and ordinary meaning of the claim term resolves the parties' dispute, a court properly refuses to employ an alternative construction. Id. Conversely, "when the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it." O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1362 (Fed. Cir. 2008).
"A determination that a claim term `needs no construction' or has the `plain and ordinary meaning' may be inadequate when a term has more than one `ordinary' meaning or when reliance on a term's `ordinary' meaning does not resolve the parties' dispute." Id. at 1361. But, if giving the language of the term its plain, ordinary meaning resolves the parties' dispute, a court need not engage in claim construction merely to accommodate one party's semantic preference for the use of a particular word or phrase. See Id. Similarly, a court need not construe a term where the parties do not present a "fundamental dispute" with respect to the meaning of the term, but instead propose the use of different language to achieve greater clarity or precision. Id. at 1362.
Claim construction is of primary importance in any patent litigation as it "defines the scope of the property right being enforced, and is often the difference between infringement and non-infringement. . . ." Retractable Techs., Inc. v. Becton, Dickinson & Co., 659 F.3d 1369, 1370 (Fed. Cir. 2011). As a matter of law, the court is charged with the responsibility for claim construction. Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1129 (Fed. Cir. 2011); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
The starting point for any claim construction is the language of the claim. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Wherever possible, claim terms are given their plain and ordinary meaning as they would have been understood by one of ordinary skill in the art at the time that the patent issued. Id. at 1312-13. In addition, claims are construed "in the context of the entire patent, including the specification." Retractable Techs, Inc., 659 F.3d at 1371.
The specification informs the plain and ordinary meaning of the term. Id.; see also Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381 (Fed. Cir. 2011); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) ("Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim."). However, the specification cannot be used to deviate from or to narrow the plain and ordinary meaning of a claim term "unless the inventor acted as his own lexicographer" and clearly set forth a definition of the disputed claim term or "intentionally disclaimed or disavowed claim scope." Retractable Techs, Inc., 659 F.3d at 1371; see also Thorner v. Sony Company Entertainment America LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (Courts may not "read limitations from the specification into claims; [and] do not redefine words. Only the patentee can do that."); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002) ("Claim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate . . . by redefining the term" [or by using in the specification] "expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope."). Thus, the "longstanding difficulty is the contrasting nature of the axioms that (a) a claim must be read in view of the specification and (b) a court may not read a limitation into a claim from the specification." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004); see also Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) ("Absent a clear disavowal or contrary definition in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language."). "[T]here is a fine line between reading a claim in light of the written description and reading a limitation into the claim from the written description." Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1321 (Fed. Cir. 2016). (emphasis original)
"The words of a claim receive the meaning discernible by a person of ordinary skill in the art who has read the entire patent, including the specification, at the time of the invention." SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1368 (Fed. Cir. 2010). The "circumstances in which the written description causes one of skill in the art to reject the plain meaning of a term are quite narrow." Retractable Techs, Inc., 659 F.3d at 1371. If the inventor uses a "broad claim term that is not supported by his specification," a court may not "redefine a claim term to match [its understanding] of the scope of the invention as disclosed in the specification." Id. An inventor's use of a broad claim term unsupported by the specification may call the validity of the patent into question, but the specification only narrows and never enlarges the meaning of a term. Id.; see also Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1373 (Fed. Cir. 2008) (stating that "the words of the claims define the scope of the patented invention"); Phillips, 415 F.3d. at 1316.
In construing a term, courts first consider sources of intrinsic evidence, such as the claim language, the specification, and, where in evidence, the prosecution history. Id. at 1317. Intrinsic evidence is the most significant source for determining the "legally operative meaning of disputed claim language." Vitronics Corp., 90 F.3d at 1582.
If, after consideration of the intrinsic evidence, the meaning of a term remains ambiguous, a court may consider sources of extrinsic evidence, including dictionaries, treatises, and expert and inventor testimony. Phillips, 415 F.3d. at 1317-18. Although extrinsic evidence may prove useful in some cases, it is, for a variety of reasons, generally less persuasive than intrinsic evidence. Id. at 1318.
As a preliminary matter, the parties disagree about the requisite qualifications of a person having ordinary skill in the art (PHOSITA). Kokido contends that a PHOSITA is someone qualified in the field of vacuums generally and hand-held vacuums in particular. Kokido's expert, Adam Carr, has a bachelor's degree in industrial design, an MBA in design and innovation management, and 20 years' experience in industrial design, including many dry vacuum design patents.
Water Tech asserts that a PHOSITA must be qualified in the field of water-submersible vacuums, specifically, due to the unique challenges of water-proofing (of electronic elements) and fluid dynamics (for maneuverability). Water Tech's expert, David Peterson, has a bachelor's degree in civil engineering and additional education and training in engineering management and watershape construction. He is a licensed engineer with approximately 20 years' experience in watershaping, including several patents related to pools and pool cleaning devices. Kokido responds that this case involves only the form of the products and not their function, so water expertise is unnecessary.
In its interrogatory answers, Water Tech described the qualifications of a PHOSITA as follows:
(ECF No. 88-7, p. 21)
While there may be aspects especially of the '975 patent that address hydrodynamics, none of the claim terms at issue here require such expertise. The Court believes that an engineer or other professional with training or experience in hand-held vacuums would appreciate the similarities and differences between air and water vacuums in a manner sufficient to comprehend the patents. Therefore, with respect to the claim construction issues presented here, the Court finds that a PHOSITA need not possess particularized specialization with respect to water-submersible devices. Mr. Carr's experience with hand-held vacuums suffices. In any case, the Court relies little on either expert's testimony for purposes of claim construction. Water Tech remains free to challenge Mr. Carr's credibility in future proceedings if it becomes relevant.
Claim 1 of the '460 Patent claims (with disputed terms in bold):
Col. 5:55-6:8.
The parties request construction of the following terms:
The "nozzle" is referenced throughout the patent but is not precisely described or identified by number in the specification. The abstract explains that the pool cleaner has an "intake nozzle for suctioning pool water," a handle "for manipulating the nozzle over the surface of a pool," and a filter housing "disposed between the nozzle and the body." Col. 1:38-45. The patent does, however, identify a nozzle attachment (36) similar to vacuum hose attachments, a tubular member (44) to which such attachments fit, and a nozzle pivot interface (42), which allows the nozzle attachments to angulate. The tubular member is identified as 44 in Figure 3, illustrating the "nozzle end of the pool cleaner," and as 44 and 58 in Figure 4, illustrating a nozzle attachment.
Water Tech asserts that "nozzle" should be construed as "
However, though the patent does not require any particular shape of nozzle attachment, the figures depict a nozzle end that is tubular and, throughout the specification, both the nozzle end and the nozzle attachments include a tubular member. For example:
Indeed, nothing but a tubular nozzle is described or illustrated in either the description or any of the embodiments discussed in the patent. The Court therefore finds that the nozzle is tubular. See Howmedica, 822 F.3d at 1321 (noting that "every description and every figure in the patent that discusses the issue" compelled the same construction). Though the Court need not rely on the extrinsic evidence to reach this conclusion, the Court also notes that both parties' dictionary definitions refer to a tube.
Water Tech asserts that "body" needs no construction and should be given its plain and ordinary meaning. Kokido proposes: "
The intrinsic evidence belies Kokido's narrow interpretation. The specification reflects that "body" (16) refers to the rear section of the device as a whole.
Perhaps most compelling, Figures 8 and 9 represent "cross-sectional view[s] of the body of the pool cleaner" and illustrate the entire rear section of the device, including its internal components. Figure 9 is most representative:
Thus Kokido's construction of "body" as meaning only the outer casing simply does not comport with the intrinsic evidence. "The words of a claim receive the meaning discernible by a person of ordinary skill in the art who has read the entire patent, including the specification, at the time of the invention." SEB S.A., 594 F.3d at 1368. The Court finds that, after reading the entire patent, a PHOSITA would understand "body" without the need for further construction. The Court rejects Kokido's narrow definition and declines to construe "body" away from its plain and ordinary meaning.
The parties agree that a toroid is a three-dimensional shape formed by rotating a two-dimensional shape about an axis. For example, a two-dimensional letter "O" (a circle) rotated about an axis forms a three-dimensional donut, i.e., a toroid. A two-dimensional rectangle rotated about its axis forms a cylinder. Kokido asserts that "toroidal" is simply the adjective form of toroid and thus should be construed to mean a complete and symmetrical toroid. Kokido therefore proposes the construction: "
The intrinsic evidence suggests a broad construction. Terms in a patent document are construed with the meaning with which they are presented in the patent document. Phillips, 415 F.3d at 1316. "The context in which a term is used in the asserted claim can be highly instructive." Id. at 1314. Here, the context of Claim 1 instructs that an opening in the upper portion of the toroidal body creates a handle. This implies that the body is asymmetrical.
The specification is the best guide to the meaning of a disputed term. Id. at 1315. Notably, patent Figures 2, 8, 9, and 11 do not depict a perfect toroid but rather a curved body with a hole in the top. Figure 2 shown below is representative, and Kokido concedes that its definition excludes this preferred embodiment. (Tr. 150) A proposed construction that does not include a preferred embodiment is rarely, if ever, correct. SanDisk Corp. V. Memorex Prod., Inc., 415 F.3d 1278, 1285 (Fed. Cir. 2005).
Though the word "toroidal" appears only in the claims and not expressly in the specification, the latter nonetheless implies a generalization of the term. Referring to the "side elevational view" of the device (Fig. 2), the narrative describes a body with "an ergonometric streamlined shape, e.g., a smooth and curvilinear surface providing low resistance in the water." Col. 2:51-53. In this respect, the specification reveals a meaning that contradicts the narrow definition proposed by Kokido.
The prosecution history is consistent with the specification in this regard. "The prosecution history has value because it provides evidence of how the PTO and the inventor understood the patent." FPS Investments, LLC v. Azteca Mill, L.P., 553 F.Supp.2d 1120, 1124 (E.D. Mo. 2008). Here, the inventor filed an amendment
Although a cylinder is a type of toroid, the Schuman patent does not contain the words toroid or toroidal; rather, the Schuman patent refers to the Schuman device as cylindrical. Thus, in the '460 amendment application, the '460 inventor asserted that Schuman "does not have a toroidal body" and explained that the '460's toroidal body, with a carrying handle formed from an opening in the body, "is more advantageous, since it is easier to grasp as a handle," causes "little or no strain to the hands of the user," "allows the pool cleaner to have a more compact shape . . . so the claimed invention is more maneuverable," and, due to the toroidal shape of its body, is "less susceptible to water currents." ECF No. 88-10. This explanation further illuminates the meaning of the specification describing a curvilinear body for low resistance. Correctly or incorrectly, the patent examiner allowed the inventor's amendment, reasoning that, although Schuman did have a toroidal body (presumably because a cylinder is a toroid), Schuman failed to teach a toroidal body having a carrying handle formed by an opening through the toroidal body for carrying, manipulating, and directing the cleaner. ECF No. 88-20.
The foregoing evidence intrinsic to the '460 — the claim, specification, and prosecution history — supports a conclusion that the inventor envisioned a curved, compact body with a hole through it for a handle, but not a perfect toroid. In other words, if Figures 2 and 9 reflect what the inventor and examiner viewed as a toroidal body, then Kokido's construction invoking 360-degree symmetry cannot be correct.
Nevertheless, Kokido contends that the foregoing intrinsic evidence provides no guidance. Instead, Kokido points to U.S. Patent No. 4,624,274, issued November 25, 1986 (the Norton patent), describing another cylindrical pool cleaner as having a "toroidal shaped housing." Norton is not disclosed as prior art in the '460 but rather in the '460's successor, specifically U.S. Patent No. 7,060,182, issued June 13, 2006 (the '182). But Kokido fails to supply authority for its proposition that a child's prior art carries the weight of intrinsic evidence as to the parent. Rather, Kokido principally argues that, because terms should be construed consistently within a patent family (Paice LLC v. Ford Motor Company, 881 F.3d 894, 904 (Fed. Cir. 2018)), and because Norton's version of toroidal (i.e., cylindrical) is prior art in the '182, then Norton's version should "relate back" to the '460. This argument is unpersuasive. There is no dispute that Schuman and Norton are cylinders. While both the '182 and '460 contain cylinders, it cannot be said that their embodiments resemble Schuman or Norton cylinders. Like the '460, the prosecution history of the '182 states that the prior art fails to teach a toroidal body with a carrying handle formed from the upper portion of the toroidal body. Again, this description precludes a construction requiring 360-degree symmetry.
Looking beyond the patent itself, the Court finds minimal value in the extrinsic evidence presented on this issue. Expert opinions can be unreliable because they are generated during litigation. FPS Investments, 553 F.Supp.2d at 1124. Water Tech's expert essentially testified that anything with a curve and a hole is toroidal; Mr. Peterson was not credible in this regard. "Unsupported . . . assertions as to the definition of a claim term are not useful to a court." Phillips, 415 F.3d at 1318. As such, the Court rejects Mr. Peterson's testimony concerning "toroidal." Inversely, Kokido's expert opined that a PHOSITA would understand "toroidal" to describe a 360-degree symmetrical toroid. But a "court should discount any expert testimony that is clearly at odds with the intrinsic evidence." Id. Here, Mr. Carr's opinion is clearly at odds with the intrinsic evidence. In short, the expert testimony is unhelpful.
As additional extrinsic evidence, Water Tech offered four unrelated patents using "toroidal" to describe the shape of other objects, namely sunglasses, a tire, a watch face, and a magnet.
Finally, a court may rely on a dictionary definition so long as that definition does not contradict the meaning ascertained by a reading of the patent documents. Trustees of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016). The suffix "-al" generally means "of, relating to, or characterized by." See e.g., Civix-DDI, LLC v. Cellco Partnership, 03 C 3792, 2005 WL 831307, at *4 (N.D. Ill. Apr. 6, 2005) (citing Webster's 3rd New Int'l Dictionary).
In sum, while the intrinsic evidence lends substantial breadth to the word "toroidal,"
For this term, Water Tech proposes: "
Kokido advocates a simpler construction describing in words what Figure 2 depicts by illustration: "
The intrinsic evidence favors Kokido's construction. Most compellingly, Figures 2, 8, 9, and 11 identify the handle in question as number 14 (see Figure 2 above), created by the hole through the top of the body when right-side up. The pole attachment member (20) extends from underneath the device to hold an extension pole. The written description confirms these distinct functions. For example, in its "hand-held mode of operation, the pool cleaner includes an integral handle 14, allowing the user immersed with the pool cleaner 10 in the pool to grasp and orient the pool cleaner 10 and so to manipulate the pool cleaner over the surfaces." Col. 2:44-48. By contrast, the "pole attachment member 20 extends from the body 16 allowing the extended pole 12 to be securely but removably attached to the pool cleaner" for use while standing outside the pool. Col. 2:63-66. The specification further states that the pool cleaner "responds primarily to the movement determined by the user by use of the handle 14 or the pole 12 when attached to the pole attachment member 20." Col. 3:17-20. (emphasis added) These excerpts make clear that the handle (14) and pole attachment member (20) are different things. Neither the figures nor the written description of the specification invite a reasonable inference that the inventor sought to optimize hand-held maneuverability by use of the pole attachment member as a handle.
Water Tech's construction is unnecessarily convoluted and unsupported by the specification. Kokido does not dispute that "integrally formed" is different than "integrally molded." Other courts have defined "integrally formed" to include an assembled unit. The Federal Circuit instructs that "integral" can encompass "more than a unitary construction." In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). But, again, claim terms must be construed in the context of the entire patent. Trustees of Columbia Univ. in City of New York, 811 F.3d at 1362. Water Tech's suggestion that the '460's handle can be assembled with the body, so as to qualify the pole attachment member as a handle, does not comport with the intrinsic evidence demonstrating that the handle is formed from an opening through the body.
Water Tech's focus on different axes is similarly flawed. By Water Tech's definition, the handle could be anywhere so long as it is not aligned with the axis of the battery housing. Water Tech goes so far as to assert that "the term `upper' is relative" because the cleaner can be held upside down. This very reasoning confirms that the device has an intended orientation, as shown in the figures. Taken to its logical extreme, Water Tech's theory of relativity negates all patent references to orientation and perspective. In the very least, it renders the claim term "upper" superfluous. "A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so." Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005).
Equally unpersuasive is Water Tech's contention that the handle, shown in the patent figures as a closed loop
"The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d at 1250. The "interpretation to be given a term can only be determined with a full understanding of what the inventors actually invented and intended to envelop with the claim." Id.
Kokido's proposal offers a natural reading supported by the claim language and specification. Accordingly, the Court adopts the construction: "
Dependent Claim 6 of the '460 Patent claims:
Col. 6:27-28.
Water Tech asserts that no construction is necessary; the term can be given its plain and ordinary meaning. Kokido proposes: "
Figures 2, 3, and 11 illustrate the assembly and mobility of this aspect of the device. Consistent with the images, the description explains:
In other words, the nozzle pivot interface enables the nozzle attachment to angulate so as to maintain contact with the surface being cleaned. Additionally, Kokido's own expert, Mr. Carr, stated in his declaration that a PHOSITA would construe the term "pivotable" to have its plain and ordinary meaning. (Carr declaration ¶142.)
Kokido's construction injects ambiguity where none exists. Construction of the claim is unnecessary because the plain and ordinary meaning suffices.
Dependent Claim 7 of the '460 Patent claims:
Col. 6:29-32.
Water Tech asserts that no construction is necessary because a PHOSITA would understand the plain and ordinary meaning of the claim language. Kokido splits the phrase into two parts. Kokido proposes that "filter housing" be defined as "
The claim itself already distinguishes the filter housing from the nozzle and body by stating that the filter housing is disposed (i.e., positioned) between the nozzle and the body. It is also obvious from the plain and ordinary meaning of the claim, read in its entirety, that the filter housing contains (i.e., houses) a filter in which debris is accumulated. Additionally, Kokido's expert declared that a PHOSITA would construe the term "filter housing" to have its plain and ordinary meaning. (Carr declaration ¶146.) A court need not engage in claim construction merely to accommodate one party's preference for the use of a particular word or phrase. O2 Micro, 521 F.3d at 1361-62. The Court finds construction unnecessary here.
Claim 12 of the '975 Patent claims:
Col. 12:58-13:12
The parties request construction of the following terms:
Water Tech asserts that "gap" does not require construction and should be given its plain and ordinary meaning. Kokido proposes: "
"Words of a claim are generally given their ordinary and customary meaning, which is the meaning a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention." O2 Micro, 521 F.3d at 1360. "In some cases, the ordinary meaning of claim language "may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id. Such is the case here. The plain and ordinary meaning of "gap" is readily apparent even to this Court. Construction is unnecessary.
For "front housing section," Water Tech proposes: "
The parties agree generally that "front housing section" identifies the front portion of the device and distinguishes it from the back of the device, called the "rear body housing." Consistent with this understanding, the specification explains:
Similarly, Figures 1-5 identify the front housing section (25) and rear body housing (23) generally as the front and back portions of the device, as illustrated above in Figure 3. The parties also agree that the front housing section comprises other components (Fig. 3), including a housing member (Fig. 2-3, 79) that serves as a shell around the internal elements of the front section. As external evidence, Water Tech offers a dictionary definition defining "section" as "a distinct part of a larger whole."
Water Tech argues that Kokido's definition is imprecise because it equates the front and back housings, whereas the inventor chose to use the broader term "section" for the front. Indeed, in the absence of evidence to the contrary, the Court must presume that the use of different terms connotes different meanings. CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1318 (Fed. Cir. 2000). Consistent with this principle, the Court agrees with both parties that the "front housing section" is more than just the housing (i.e., shell, casing). Thus, neither party's definition specifying the housing is accurate. Rather, "front housing section" simply identifies the front part (i.e., portion, half) of the device, including the housing member and components therein, as distinct from the rear body housing. As such, the Court rejects the parties' constructions and instead construes "
For this phrase, Water Tech proposes: "
Again, Figures 2 and 3 illustrate the configuration. The front and rear sections of the device connect by way of fittings (61, 69) and spacers (67) that leave a narrow space (described in one place as "about one quarter of an inch" Col. 8:33-34) in between the two sections (i.e., the gap (75)) for water expulsion. The specification describes several variations:
To simplify, Water Tech explains that the spacers can be attached to the rear portion of the device extending forward, or to the front section extending backward, or neither. Based on these variations, Water Tech claims that the gap may be positioned at the front of the rear portion, or at the back of the front section, or both, depending on the placement of the spacers. Kokido responds that such a characterization is absurd; there is only one gap, formed by spacers between the front and back sections, regardless of which part holds them in place.
The Court agrees with Kokido that the gap need not be attributed to either section of the device, as Water Tech advocates. The claim language itself is clear in this respect: the affixing of the front housing section to the rear body housing defines a gap between the two. The specification, too, belies Water Tech's characterization.
Put simply, the gap is located at and created by the junction between the two sections. Thus, Water Tech's definition is not acceptable. However, Kokido's definition is also flawed insofar as it injects the new and undefined term "enclosure" and contains the redundant adjective "unfilled" already inherent in the concept of a gap or space.
The Court finds that the proper construction is: "
For this claim term, Kokido proposes: "
Water Tech contends that that a PHOSITA would readily understand the phrase "expanded skeletal structure" such that the plain and ordinary meaning suffices. At the same time, however, Water Tech objects to Kokido's limitations "increases in size" and "opens wide at an end." Clearly, the parties dispute what "an expanded skeletal structure" means. "[W]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it." O2 Micro, 521 F.3d at 1361-62.
Here, the claim language describes the skeletal structure as follows:
In the specification, the expanded skeletal structure is illustrated in Figure 3 (99), showing an expanding support framework. The written specification further explains: "As can be seen, the cone plate 71 supports an expanded skeletal structure 99 which includes longitudinal ribs 101 periodically connected to a series of ring supports 103." Col. 5:67-6:3.
Thus, the "skeletal structure" is "a skeletal framework including structural support members." As for "expanded," while the front housing section in Claim 12 is not necessarily limited to the nose-cone-shaped housing described in Claim 1 and in the preferred embodiments, in light of the specification, "expanded" indicates "wider at one end." Therefore, the Court concludes that "
Water Tech maintains that "attached to said rear body housing" needs no construction and should be given its plain and ordinary meaning. Kokido proposes: "
A review of the patent as a whole reveals two important factors related to this issue. First, while Claim 1 and Claim 10 both disclose a cone plate attached to the rear body housing, neither claim discloses an expanded skeletal structure attached to the rear body housing and extending into the front housing section. Rather, that element is disclosed only in Claim 12 and dependent Claim 13. Claims 1 and 10 disclose only "a filter cone housing member" attached to said cone plate. And Claim 12 does not disclose a cone plate but instead simply discloses that the expanded skeletal structure is "attached" to the rear body housing. However, the figures illustrate, and the preferred embodiment discusses, an expanded skeletal structure that is attached to a cone plate, which is, in turn, affixed to the rear body housing. The written specification states in pertinent part:
These excerpts together indicate that, in one and perhaps the preferred embodiment, the expanded skeletal structure is attached to the cone plate, which is attached to the rear body housing by way of the fittings. Figure 3 illustrates such an assembly (99, 71, 61, 69, 23). So, Kokido's proposed construction requiring direct attachment of the skeletal structure to the housing conflicts with the specification and thus cannot be correct.
Further support for this conclusion is found in the fact that, discussing the filter cone housing and the cone plate, the claim language uses the word "attached," but in discussing the front housing section and the rear body housing, the claims use the word "affixed." Claim terms must be construed in the context of the entire patent. Trustees of Columbia Univ. in City of New York, 811 F.3d at 1362. Viewing the patent in its entirety, a PHOSITA would understand that "attached" in this context includes direct and indirect attachment. Thus, the Court construes "
Dependent Claim 13 of the '975 Patent claims:
Col. 13:13-19.
Water Tech contends that this claim does not require construction and should be given its plain and ordinary meaning. Kokido proposes: "
Figure 3 shows the valve (85) at the end of an extension structure (113) not covered by filter material. The specification explains:
In support of its construction, Kokido simply asserts, without elaboration, that a PHOSITA would understand the claim in question to mean what Kokido proposes. Water Tech counters that Kokido's definition attempts to limit the claim scope, when the actual language "in communication with" does not specify positioning but merely describes the relationship between the valve and the opening. The Court agrees that Kokido's definition adds an unnecessary restriction. A claim should not be limited by the preferred embodiment. Phillips, 415 F.3d at 1323. Apart from Kokido's attempt to restrict the claim language, the parties do not appear to have any real dispute with respect to the claim language. A court need not construe a term where the parties do not present a fundamental dispute with respect to the meaning of the term but instead propose the use of different language to achieve greater clarity or precision. O2 Micro, 521 F.3d at 1362. Kokido fails to convince the Court of a fundamental dispute over the meaning of this claim, and the Court agrees with Water Tech that the plain and ordinary meaning suffices.
The 'D396 design patent claims "the ornamental design for a pool vacuum" as shown in the figures.
Kokido urges the Court to construe this claim as requiring opaque surfaces. In support, Kokido cites § 1503.02.II of the Manual of Patent Examining Procedure (MPEP) stating: "Oblique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror." In response, Water Tech contends that MPEP § 1503.02 only requires oblique line shading when the inventor intends to limit the claim to a transparent surface; given that the 'D396 does not specify whether the exterior is opaque or transparent, both embodiments are included in its scope.
Water Tech's position is supported by the MPEP and the reasoning of another district court. MPEP § 1503.02 states: "While surface shading is not required under 37 CFR 1.152, it may be necessary in particular cases to shade the figures to show clearly the character and contour of all surfaces of any 3-dimensional aspects of the design." MPEP § 1503.02. (emphasis added) "The mandatory language does not necessarily mean that lack of oblique line shading disclaims a transparent . . . surface, nor does the lack of oblique line shading mean that the patentee only claimed an opaque surface." Apple, Inc. v. Samsung Elecs. Co., Ltd., 11-CV-01846-LHK, 2012 WL 3071477, at *5 (N.D. Cal. July 27, 2012). The MPEP "only specifies that an inventor wishing to limit a particular surface to a transparent . . . material must indicate the surface through the use of oblique lines. It does not state that failure to include oblique lines necessarily excludes the use of a transparent surface." Id. This Court agrees with that conclusion.
Kokido further argues that the 'D396 necessarily claims an opaque housing because it relates to the '975 utility patent, and Figures 2 and 3 of the '975 (see above) suggest that the filter cone housing member (79) is opaque. Specifically, Figure 3 mirrors Figure 2 "but with a portion of the filter cone housing member removed to expose an expanded skeletal structure covered with filter material." Col. 2:16-18. But Kokido offers no authority for its proposition that the '975 dictates construction of the 'D396, and it is not intrinsic evidence. "Design patents have almost no scope and are limited to what is shown in the application drawings." FPS Investments, 553 F. Supp. 2d at 1130. In construing a design patent, the "scope of the claimed design encompasses its visual appearance as a whole." Id.
Viewing the design drawings within the foregoing framework, the Court concludes that the scope of the 'D396 patent is not limited to contemplate only an opaque housing. The Court therefore adopts Water Tech's construction.
