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California Expanded Metal Products Co. v. Klein

United States District Court, W.D. Washington, Seattle

April 17, 2019

JAMES A. KLEIN, et al., Defendants.


          Honorable James L. Robart U.S. District Court Judge.


         This is an order on claim construction in a patent infringement action involving four related patents: U.S. Patent No. 7, 681, 365 (“the '365 Patent”), U.S. Patent No. 7, 814, 718 (“the '718 Patent”), U.S. Patent No. 8, 136, 314 (“the '314 Patent”), and U.S. Patent No. 8, 151, 526 (“the '526 Patent”) (collectively, “the Patents”). Plaintiffs California Expanded Metal Products Company and Clarkwestern Dietrich Building Systems, LLC (d/b/a ClarkDietrich Building Systems) (collectively, “Plaintiffs”) allege that Defendant James A. Klein, BlazeFrame Industries, Ltd., and Safti-Seal, Inc. (collectively, “Defendants”) have infringed the Patents. (Compl. (Dkt. # 1) ¶¶ 82-85, 95-98.) The parties dispute the construction of four claim terms. (Jt. Claim Constr. Stmt. (Dkt. # 92).) The court has reviewed the parties' claim construction briefs (Pls. Op. Br. (Dkt. # 93); Defs. Op. Br. (Dkt. # 94); Pls. Resp. (Dkt. # 95); Defs. Resp. (Dkt. # 96)), all materials filed in support of the claim construction briefs, the relevant portions of the record, and the applicable law. The court also heard from counsel at a Markman hearing[1]on March 22, 2019. (3/22/19 Min. Entry (Dkt. # 97).) Being fully advised, the court construes the disputed terms as set forth below.


         The Patents cover head-of-wall assemblies used in commercial construction to prevent the spread of smoke and fire. (See Trojan Decl. (Dkt. # 93) ¶ 2, Ex. 1 (“'365 Patent”); id. ¶ 3, Ex. 2 (“'718 Patent”); id. ¶ 4, Ex. 3 (“'314 Patent”); id. ¶ 5, Ex. 4 (“'526 Patent”).) As shown in Figure 1 of the '365 Patent, the inventive head-of-wall assembly [10] comprises a footer track [14] and a header track [16], the top of which is adjacent to the ceiling [30]. ('365 Patent at Fig. 1; id. at 4:5-7.) Sheet-metal studs [18] are positioned vertically between the header and footer tracks to frame walls. (Id. at Fig. 1; id. at 4:7-14.)

         (Image Omitted)

         As Figure 2 of the '365 Patent illustrates, the header [16] is a “U”-shaped metal track: it comprises a horizontal web [26] that is connected to a pair of downward-facing sidewalls [28]. (Id. at Fig. 2; id. at 4:40-44.) Like all the Patents, the '365 Patent features “an elongated intumescent strip” [34] that is “affixed lengthwise” to at least one of the outer sidewall surfaces. (Id. at Fig. 2; id. at 4:51-53.) When exposed to heat, the intumescent material expands to fill the gap between the wallboard and the ceiling, preventing smoke and fire from penetrating adjacent areas. (See, e.g., Id. at Abstract.)

         (Image Omitted)

         The parties dispute the meaning of four claim terms: (1) “intumescent strip”; (2) “affixed lengthwise on at least one of the outer sidewall surfaces”; (3) “inorganic filler”; and (4) “dispersed in a emulsion of polyvinyl acetate or silicone.” (See generally Jt. Claim Constr. Stmt.) The first two disputed claim terms appear in all four Patents. The latter two disputed claim terms appear only in the '314 Patent, which, uniquely among the Patents, claims an intumescent strip with a specific composition. (See '314 Patent at 10:29-33.)


         A. Law on Claim Construction

         The court is solely responsible for construing patent claims. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). The court construes claims as a matter of law, although 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 claim terms.

         The 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. See Id. Intrinsic evidence, which includes the patent and its prosecution history, is the primary source from which to derive a claim's meaning.[2] 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. Phillips, 415 F.3d 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.”).

         The court must read claim language in light of the remainder of the patent's specification. Phillips, 415 F.3d at 1316 (explaining that “the 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 he or 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 Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed. Cir. 2003).

         More recently, the Federal Circuit has continued to emphasize the importance of reading the claims in the context of the specification and prosecution history.[3] 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.

         Finally, the court can consider extrinsic evidence, “including expert and inventor testimony, dictionaries, and learned treatises.” Id. (quoting Markman, 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.

         B. Relationship of the Patents

         Before construing the disputed claim terms, the court addresses the relationship of the Patents. All four Patents are related: the '718 Patent is a continuation of the '365 Patent; the '314 Patent is a continuation of both the '365 Patent and the '718 Patent; and the '526 Patent is a continuation-in-part of the '365 Patent. (See '718 Patent at 1:6-12; '314 Patent at 1:6-14; '526 Patent at 1:7-14.)

         “By definition, a continuation adds no new matter and is akin to an amendment of a pending application.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1579 (Fed. Cir. 1996) (Mayer, J., concurring). As continuations of the '365 Patent, the '718 Patent and '314 Patent must share the specification of the '365 Patent. See Id. At first glance, however, the '718 Patent and the '314 Patent appear to add new matter to the shared specification: the specifications of both the '718 Patent and the '314 Patent include a substantial component of the specification of an unrelated patent, U.S. Patent No. 6, 207, 085, to Eva Ackerman (“the Ackerman Patent”). (See '718 Patent at 5:19-8:51; '314 Patent at 5:25-8:62; see also Trojan Decl. ¶ 8, Ex. 6 (“Ackerman Patent”) at 2:18-5:64.) The Ackerman Patent covers “heat expandable compositions” that may serve as the “intumescent strip” claimed in the Patents. (See '365 Patent at 5:7.)

         Notwithstanding the presence in the specifications of the '718 Patent and the '314 Patent of matter that does not physically appear in the '365 Patent's specification, the court finds that the '718 Patent and the '314 Patent are indeed continuations of the '365 Patent. As explained below, the '365 Patent incorporates by reference the entirety of the Ackerman Patent. See infra § III.B.1; (see also '365 Patent at 5:6-10.) Thus, the patentee simply inserted into the '718 Patent and the '314 Patent's specifications a section of the Ackerman Patent that was already incorporated by reference into the '365 Patent. The court thus treats the '718 Patent and the '314 Patent as what they claim to be: continuations of the '365 Patent. (See '718 Patent at 1:6-12; '314 Patent at 1:6-14.)

         As mentioned above, the first two disputed claim terms-“intumescent strip” and “affixed lengthwise on at least one of the outer sidewall surfaces”-appear in all the Patents. The court “presume[s], unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.” Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003); see also NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005), abrogated on other grounds by, Zoltek Corp. v. United States, 672 F.3d 1309, 1323 (Fed. Cir. 2012) (“Because [the plaintiff's] patents all derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.”). The parties construe the first two disputed claim terms consistently across the Patents. (See generally Jt. Claim Constr. Stmt.; Pls. Op. Br.; Defs. Op. Br.) The court does the same.

         C. Disputed Terms

         1. intumescent strip

         The claim term “intumescent strip” appears in Claims 1, 8, 9, 10, and 11 of the '365 Patent; Claims 1, 8, 9, 10, 11, 12, 14, and 15 of the '718 Patent; Claims 1, 6, 8, and 9 of the '314 Patent; and Claims 1, 2, 7, 8, 9, and 10 of the '526 Patent. ('365 Patent at 6:57, 8:11, 8:14, 8:19, 8:22; '718 Patent at 10:25, 11:8, 11:16, 11:18-19, 12:8, 12:17, 12:21; '314 Patent at 10:26, 10:51, 10:60, 10:64; '526 Patent at 7:41, 8:9, 8:28, 8:32-33, 8:35-36, 8:39.) Claim 1 of the '365 Patent is representative of the asserted claims with respect to the term “intumescent strip.” It recites: “A fire retardant head-of-wall assembly configured to seal a linear head-of-wall construction joint or gap when exposed to a heat source, comprising: . . . an elongated intumescent strip affixed lengthwise on at least one of the outer sidewall surfaces of the pair of sidewalls . . . .” ('365 Patent at 6:43-45, 57-59; see also '718 Patent at 10:10-12, 23-25; '314 Patent at 12:21-22, 26-28; '526 Patent at 7:33-34, 41-43.)

         The parties propose the following constructions of the claim term “intumescent strip”:

Plaintiffs' Proposed Construction: “a barrier comprising some material capable of expanding when subjected to a heat source.” (Pls. Op. Br. at 11.)
Defendants' Proposed Construction: “an expandable substance that is distributed substantially uniformly throughout a solid resinous material, in a rectilinear form, such that when exposed to heat swells.” (Defs. Op. Br. at 6.)

         The court construes this claim term as “a strip that comprises a substance that expands when exposed to heat.” This construction reflects the parties' agreement that an intumescent substance is a substance that expands, or swells, when exposed to heat. (See Defs. Op. Br. at 6; Pls. Resp. at 2.) In addition, the construction makes clear that an intumescent strip necessarily includes, but is not limited to, an intumescent substance. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1319 (Fed. Cir. 2009) (“The . . . term ‘comprising,' . . . is well understood in patent law to mean ‘including but not limited to.'”).

         To begin, the court declines to construe the word “strip.” The court is not to make a construction that “contribute[s] nothing but meaningless verbiage to the definition of the claimed invention.” Harris Corp. v. IXYS Corp., 114 F.3d 1149, 1152 (Fed. Cir. 1997). Claim construction is required only “when the meaning or scope of technical terms and words of art is unclear . . . and requires resolution in order to determine” the issue. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Accordingly, “[i]f the claim language is clear on its face, then [the court's] consideration of the rest of the intrinsic evidence is restricted to determining if a deviation from the clear language of the claims is specified.” Interactive Gift Express, Inc. v. Compuserv Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001); see also Hastings v. United States, ...

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