United States District Court, W.D. Washington, Seattle
CALIFORNIA EXPANDED METAL PRODUCTS COMPANY, et al., Plaintiffs,
JAMES A. KLEIN, et al., Defendants.
CLAIM CONSTRUCTION ORDER
Honorable James L. Robart U.S. District Court Judge.
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
hearingon March 22, 2019. (3/22/19 Min. Entry
(Dkt. # 97).) Being fully advised, the court construes the
disputed terms as set forth below.
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 
comprises a footer track  and a header track , the
top of which is adjacent to the ceiling . ('365
Patent at Fig. 1; id. at 4:5-7.) Sheet-metal studs
 are positioned vertically between the header and footer
tracks to frame walls. (Id. at Fig. 1; id.
Figure 2 of the '365 Patent illustrates, the header 
is a “U”-shaped metal track: it comprises a
horizontal web  that is connected to a pair of
downward-facing sidewalls . (Id. at Fig. 2;
id. at 4:40-44.) Like all the Patents, the '365
Patent features “an elongated intumescent strip”
 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
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.)
Law on Claim Construction
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.
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. 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.”).
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).
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.
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.
Relationship of the Patents
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.)
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.)
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.)
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.
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.)
parties propose the following constructions of the claim term
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.)
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
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, ...