United States District Court, W.D. Washington, Seattle
CLAIM CONSTRUCTION ORDER
L. ROBART UNITED STATES DISTRICT JUDGE.
matter comes before the court in order to construe terms in
United States Patent No. 6, 585, 212 (the
"Patent"), entitled "Quick Release Electronics
Platform." (See Am. Compl. against Arkon (Dkt.
# 44) ¶10; see also Ex. A
("Patent").) The court has reviewed the
parties' claim construction briefs (NPI Op. Br. (Dkt.
#86); Defs. Op. Br. (Dkt. # 85); NPI Resp. (Dkt. # 92); Defs.
Resp. (Dkt. # 94)), all materials filed in support thereof,
the relevant portions of the record, and the relevant case
law. The court also heard oral argument from the parties at a
Markman hearing on September 19, 2017. (9/19/17 Min.
Entry (Dkt. # 95).) Being fully advised, the court construes
the disputed terms as set forth below.
National Products, Inc. ("NPI") owns the Patent and
alleges that Defendants Arkon Resources, Inc.
("Arkon"), Bracketron, Inc.
("Bracketron"), High Gear Specialties Inc.
("HGS"), and Wireless Accessory Solutions, LLC
d/b/a iBolt ("iBolt") (collectively,
"Defendants") infringe claim 27 of the Patent
through their respective accessory device holder products.
(See Am. Compl. ag. Arkon ¶14; Am. Compl. ag.
Bracketron (Dkt. # 45) ¶14; Am. Compl. ag. HGS (Dkt. #
46) ¶14; Am. Compl. ag. iBolt (Dkt. # 47) ¶ 21.)
NPI further asserts that Bracketron additionally infringes
claims 21 and 23 of the Patent. (Am. Compl. ag. Bracketron
¶14.) The parties stipulated to consolidate the four
cases (Stip. Mot. to Consolidate (Dkt. # 18)), and the court
adopted their joint memorandum (4/7/16 Min. Entry (Dkt. #
Patent covers a mounting platform for holding a portable
accessory device, such as a laptop or cell phone, in an
automobile or other moving environment (the
"Invention"). The Invention contains the following
major structural components: (1) the platform, where the
accessory device sits, which comprises of two large frame
members or body portions that are pulled towards each other
through a biasing member, such as a tension spring; and (2)
several smaller arm tools that attach to both sides of the
frame members and jut up above the top of the platform, so
that these arms can grip the upper edge of the accessory
device and secure the device against the platform.
(See Patent at 1:47-2:3.) These two structural
components feature repeatedly in the disputed terms.
parties dispute the meaning of the following eight claim
terms in the Patent:
1. slidably interconnected;
2. mechanically coupled;
3. base portion (of the clamping mechanism);
4. base portion (of the clamping member);
5. jaw portion;
6. jaw portion extending at an obtuse angle from one end of
the base portion AND jaw portion extending at a predetermined
obtuse angle from one end of the elongated base portion;
7. jaw portion extending from the base portion at an angle
between approximately 120 degrees and 150 degrees AND jaw
portion ... extending at an angle between approximately 120
degrees and 150 degrees; and
8. clamp mounting surface being structured to cooperate with
the mounting structure of the clamping mechanism for
positioning the resilient compressible pad spaced away from
and inclined toward the device mounting surface.
court now discusses the law behind claim construction and the
application of that law to these eight terms.
Law of Claim Construction
court has the sole responsibility for construing patent
claims. Markman v. Westview Instruments, Inc., 517
U.S. 370, 372 (1996). Subsequent authority has clarified that
the court construes claims as a matter of law, though the
court may make subsidiary factual findings regarding
extrinsic evidence. Teva Pharm. USA, Inc. v. Sandoz,
Inc., ___U.S. ___, 135 S.Ct. 831, 836-38, 840-42 (2015).
In practice, executing the Markman mandate means
following rules that rank the importance of various sources
of evidence that disclose the "true" meaning of
Federal Circuit summarized its view of proper claim
construction in Phillips v. AWH Corporation, 415
F.3d 1303 (Fed. Cir. 2005) (en banc). Although the case
focused on the role of dictionaries in claim construction, it
also reviewed the claim construction process. Intrinsic
evidence, which includes the patent and its prosecution
history, is the primary source from which to derive a
claim's meaning. Id. at 1314. The court's task
is to determine the "ordinary and customary
meaning" of the terms of a claim in the eyes of a person
of ordinary skill in the art on the filing date of the
patent. Id. at 1313 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)). In its review of intrinsic evidence, the court should
begin with the language of both the asserted claim and other
claims in the patent. Id. at 1314; see also
Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)
("[C]laim construction analysis must begin and remain
centered on the claim language itself.").
court must read claim language, however, in light of the
remainder of the patent's specification.
Phillips, 415 F.3d at 1316 ("[T]he
specification necessarily informs the proper construction of
the claims."). The specification acts as a
"concordance" for claim terms, and is thus the best
source beyond the claim language for understanding those
terms. Id. at 1315. The inventor is free to use the
specification to define claim terms as she wishes, and the
court must defer to the inventor's definitions.
Id. at 1316 ("[T]he inventor's lexicography
governs.").The court should "rely heavily" on
the specification in interpreting claim terms. Id.
at 1317. The court should not, however, commit the
"cardinal sin" of claim construction-impermissibly
reading limitations from the specification into the claims.
Id. at 1320 (citing SciMed Life Sys. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed.
Cir. 2001)). Although a court should limit the meaning of a
claim where the "specification makes clear at various
points that the claimed invention is narrower than the claim
language might imply, " the court must not read
particular embodiments and examples appearing in the
specification into the claims unless the specification
requires it. Alloc, Inc. v. Int'l Trade
Comm'n, 342 F.3d 1361, 1370 (Fed. Cir. 2003);
Constant v. Advanced Micro-Devices, Inc., 848 F.2d
1560, 1571 (Fed. Cir. 1988). Additionally, although figures
illustrating the invention may be used in construing claims,
"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." Prima
Tekll, I.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148
(Fed. Cir. 2003).
recently, the Federal Circuit has continued to emphasize the
importance of reading the claims in the context of the
specification and prosecution history. Laryngeal
Mask Co. Ltd. v. Ambu, 618 F.3d 1367, 1370 (Fed. Cir.
2010) ("The words of a claim are generally given their
ordinary and customary meaning as understood by a person of
ordinary skill in the art in question at the time of the
invention when read in the context of the specification and
prosecution history.")- Although the patent's
prosecution history is also intrinsic evidence, it is
generally "less useful for claim construction
purposes" than the specification. Phillips, 415
F.3d at 1317. Because the prosecution history documents an
invention's evolution from application to the issuance of
the patent, it usually "lacks the clarity of the
specification." Id. The prosecution history is
useful, however, in determining when an inventor has
expressly disavowed certain interpretations of her claim
language. Id. Specifically, a patentee may limit the
meaning of a claim term by making a clear and unmistakable
disavowal of scope during prosecution. Comput. Docking
Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374-75
(Fed. Cir. 2008). A patentee could do so, for example, by
clearly characterizing the invention in a way to try to
distinguish prior art. Id. The doctrine of
prosecution disclaimer "protects the public's
reliance on definitive statements made during
prosecution" by "precluding patentees from
recapturing through claim interpretation specific meanings
[clearly and unmistakably] disclaimed during
prosecution." Id. (internal quotation marks
the court can consider extrinsic evidence, "including
expert and inventor testimony, dictionaries, and learned
treatises." Phillips, 415 F.3d at 1317 (quoting
Marhnan, 52 F.3d at 980) (internal quotation marks
omitted). For a variety of reasons, extrinsic evidence is
usually "less reliable than the patent and its
prosecution history" as a source for claim
interpretation. Id. at 1318. The court thus need not
admit extrinsic evidence, but may do so at its discretion.
Id. at 1319.
this general framework in mind, the court turns to the
disputed claim terms.
parties ask the court to construe the following eight terms.
The court addresses each term in the order the parties
briefed them and groups together terms when appropriate.
term "slidably interconnected" appears in Claims 1,
21, 27, and 33 of the Patent. (Patent at 7:21-32, 9:40,
10:16-17, 10:54-55.) It describes how the two frame members
of the Invention are structured in relation to each other.
(See id.) The parties agree that the term must allow
the two frame members to slide relative to one another along
one direction but disagree as to whether the two frame
members must be directly connected. (NPI Op. Br. at 7; Defs.
Op. Br. at 6-7.) The parties offer the following competing
NPI's Proposed Construction:
"structured to permit sliding relative to one another
along one axis." (NPI Op. Br. at 6.)
Defendants' Proposed Construction:
"connected to each other to permit sliding relative to
one another along one axis." (Defs. Op. Br. At 6.)
court construes this term as "connected, directly or
indirectly, to each other to permit sliding relative to one
another along one axis." This construction largely
tracks Defendants' proposal but emphasizes that the
connection may be either direct or indirect.
maintain that the two frame members must be directly
connected because the descriptions and the embodiments in the
specification exclusively describe a track-and-slide system
that directly connects the two frame members. (Defs. Op. Br.
at 6-7.) But this is an improper attempt to import the
limitations in the specification to the claim language.
See SciMed Life Sys., 242 F.3d at 1341. There are no
"repeated and definitive remarks" in the
specification that the embodiments described are the only
ones contemplated, see Comput. Docking Station
Corp., 519 F.3d at 1374; in fact, the specification
contains a statement to the contrary, noting that
"[w]hile the preferred embodiment of the invention has
been illustrated and described, it will be appreciated that
various changes can be made therein without departing from
the spirit and scope of the invention" (Patent at
7:25-28). Because the intrinsic evidence does not demonstrate
"a clear intention to limit the claim scope" in the
fashion Defendants propose, the court declines to do so.
See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 906 (Fed. Cir. 2004).
conclusion-that not every iteration contemplated by the
Patent contains the track-and-slide system-is bolstered by
the fact that Claim 6, a dependent claim, specifies that the
two frame members include "cooperating track-and-slide
members." (See Patent at 7:65-66.) Because this
dependent claim contains the track-and-slide system, it
implies that the independent claim upon which it
depends-Claim 1 with the "slidably interconnected"
language-does not limit the Invention to track-and-slide
systems. See Phillips, 415 F.3d at 1315 (finding
that the presence of a dependent claim that adds a particular
limitation gives rise to the presumption that the limitation
is not present in the independent claim).
limiting "slidably interconnected" to a direct
connection excludes an embodiment disclosed by the
specification. An interpretation that makes a preferred
embodiment fall outside the scope of the patent claim is
"rarely, if ever, correct." Vitronics
Corp., 90 F.3d at 1583. But Defendants' construction
would do just that. For instance, Figure 2 of the Patent
evinces the two frame members in an indirect connection: The
body portions are not directly touching each other, but
instead, are connected through an intermediary structure-in
this embodiment, a tension spring. (See Patent at Fig.
2.) Furthermore, in the description of the preferred
embodiment, the specification states that "the first and
second body portions 12, 20 can be separated by a force
exerted along the first direction 16." (Id. at
4:50-51.) But an intermediary component, such as a tension
spring, would "resist the separating force ... and
thereby urge the first and second body portions 12, 20 back
together." (Id. at 5:52-54.) Thus, both the
figure and the description illustrate the possibility of an
indirect connection between the two frame members.
conclusion that "slidably interconnected" would
encompass both direct and indirect connections is further
supported by Douglas Dynamics, LLC v. Buyers Products
Company, 717 F.3d 1336 (Fed. Cir. 2013). Douglas
Dynamics considered a similar dispute over whether the
term "connected to" encompassed only direct
connections between the two parts in question. Id.
at 1342. The patent contained an embodiment that depicted the
two parts connected via an intermediate "hitch arm"
that is separate from both pieces but "serves to
indirectly connect the two [parts] together."
Id. at 1342-43. Because a construction that required
direct connections would "exclude a preferred embodiment
of the invention, " id. at 1342, the court
concluded that the term "connected to" is not
limited to direct connections, id. at 1343.
Similarly here, the Patent features an embodiment that
depicts the two frame members connected via a tension spring
that is separate from both body portions but indirectly
connects the two. (Patent at Fig. 2.) Because construing the
term to encompass only direct connections would exclude this
preferred embodiment, the term "slidably
interconnected" likewise cannot be limited to direct
correctly observe that the term "interconnect" is
used in Claim 16 to describe a direct connection. (Defs. Op.
Br. at 7.) And it is generally correct that terms are
"normally used consistently throughout the patent."
Phillips, 415 F.3d at 1314. However, although the
connection in Claim 16 happens to be a direct one, nothing
about the usage of the term "interconnect" in that
claim limits all connections to direct connections.
(See Patent at 8:65-66.) Thus, there is no
inconsistency for the term "interconnect" to
include both direct connections, as described in Claim 16,
and indirect connections, as is the case for the two frame
Defendants contend that the dictionary definition of
"interconnect" supports their proposed
construction. (Defs. Op. Br. at 7.) The Webster's II New
College Dictionary, which Defendants rely on, defines
"interconnect" as "[t]o be connected one to
the other." (Id.) But critically, this
definition does not mandate that the connection be direct.
Indeed, even an indirect connection, such as the one depicted
in Figure 2, would fall within the Defendants' own
definition for "interconnect." Thus, the dictionary
definition supports the court's construction.
foregoing analysis leads the court to conclude, as NPI
argues, that "slidably 1 interconnected"
encompasses both direct and indirect connections. But
NPI's proposed I construction is nonetheless flawed.
NPI's proposal--"structured to permit sliding
relative to one another"-could encompass devices that
are not connected at all, but ¶ rather structured in a
way that allows the two parts to move alongside each other.
Such a reading would contradict the term's ordinary and
customary meaning as understood by a person of ordinary skill
in the art. And nothing in the intrinsic evidence suggests
that "slidably interconnected" can be construed to
include devices whose frame portions are not connected
whatsoever. (See generally Patent.)
the court adopts Defendants' construction but clarifies
that the connection may be direct or indirect. The court
construes "slidably interconnected" to mean
"connected, directly or indirectly, to each other to