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JPW Industries, Inc. v. Olympia Tools International, Inc.

United States District Court, M.D. Tennessee, Nashville Division

October 5, 2017

JPW INDUSTRIES, INC., Plaintiff,
v.
OLYMPIA TOOLS INTERNATIONAL, INC. Defendant.

          ORDER FOLLOWING CLAIM CONSTRUCTION HEARING

          JON P. MCCALLA, UNITED STATES DISTRICT COURT JUDGE.

         The cause is before the Court on the parties' request for claim construction pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), filed May 25, 2017. (ECF No. 30.) The Court has considered the parties' claim construction briefs and arguments made at the claim construction hearing on September 6, 2017. The Court's determinations regarding claim term interpretation are set out below.

         I. BACKGROUND

         A. Factual History

         The action arises out of allegations by Plaintiff JPW Industries (“JPW”) against Defendant Olympia Tools International (“OTI”) of infringement of United States Patent 9, 079, 464 (“the '464 patent”). Plaintiff JPW is a Washington corporation with a principal place of business in Tennessee. (Compl., ECF No. 1 ¶ 5.) Defendant OTI is a California corporation with a principal place of business in California. (Id. ¶ 6.)

         This action involves alleged infringement of the following patent on a portable vise, invented by Timothy Onello and Charles Weber and assigned to JPW:

U.S. Patent Number

Issued

Patent

9, 079, 464

July 14, 2015

Portable Work Holding Device and Assembly

(Id. ¶¶ 11-12; U.S. Patent 9, 079, 464, ECF No. 1-1.) JPW alleges that OTI's OLYMPIA HITCH VISE (Model No. 38-652) infringes on one of more the inventions recited in the ‘464 Patent. (Compl. ¶¶ 13-15). JPW asserts that at least claims 1, 3, 5-8, 12, and 21-25 are infringed. (Id. at ¶ 15.) JPW sells a competing portable vise, ATV: ALL TERRAIN VISE, and has entered two copies of the device into evidence as Exhibits 1 and 2.

         B. Procedural History

         Plaintiff filed the Complaint on December 6, 2016, in the Middle District of Tennessee. (ECF No. 1.) On February 24, 2017, Defendant filed an Answer to the Complaint, denying infringement and raising affirmative defenses including invalidity and prosecution history estoppel. (Def.'s Ans., ECF No. 20.) On March 9, 2017, the parties held an initial case management conference before Magistrate Judge Barbra Holmes, (ECF No. 23), and on March 16, 2017, Magistrate Judge Holmes entered an Initial Case Management Order. (ECF No. 24.)

         On May 25, 2017, the parties entered a Joint Claim Construction Statement (ECF No. 30), identifying eight claims whose terms the parties disputed. On June 9, 2017, both parties filed Opening Claim Construction Briefs. (ECF Nos. 35-36.)

         On June 1, 2017, Defendant filed a Motion for Judgment on the Pleadings for Dismissal Based on Improper Venue. (ECF No. 31.) On June 29, Plaintiff filed a response to the motion. (ECF No. 44.) On July 11, 2017, Defendant filed a reply. (ECF No. 50.) On July 19, 2017, the Court ordered supplemental briefs on whether Defendant has “a regular and established place of business” in this District. On August 8, 2017, Defendant filed its supplemental response. (ECF No. 63.) On August 24, 2017, Plaintiff filed its reply to Defendant's supplemental response. (ECF No. 77.) Defendant's motion to dismiss remains pending before the Court.

         On June 22, 2017, the Court held a Telephonic Scheduling Conference with the parties. (Min. Entry., ECF No. 34.) On August 11, 2017, the Court held a Patent Scheduling Conference in Nashville, Tennessee. (ECF No. 71.) On August 25, 2017, the parties jointly proposed a scheduling order, and on August 31, 2017, the Court entered a scheduling order reflecting the proposal. (ECF No. 81).

         On September 6, 2017, the Court held a Claim Construction Hearing in Nashville, Tennessee. At the hearing, the Court heard arguments from both parties regarding interpretation of the terms listed in the Joint Claim Construction Statement. (ECF No. 30.)

         II. LEGAL STANDARDS

         “In conducting an infringement analysis, a court must first determine the meaning of any disputed claim terms and then compare the accused device to the claims as construed.” Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1371 72 (Fed. Cir. 2014) (citing Wavetronix LLC v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1354 (Fed. Cir. 2009)); accord Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc). Regarding the first step, claim construction is a question of law with “evidentiary underpinnings” to be determined by the court. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 835, 838 (2015); Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996)). Where terms or phrases are “not commonly understood, ” a court may make subsidiary findings of fact based on evidence extrinsic to the patent to assist the court in its task of claim interpretation. See Teva Pharm., 135 S.Ct. at 837-38. These factual determinations precede the court's ultimate legal construction of the patent's claims. Id.

         A. Claims

         Claim construction begins with the language of the claims themselves. Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1354-55 (Fed. Cir. 2014) (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001)). Claim terms in the patent “are generally given their ordinary and customary meaning, which 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.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1323 (Fed. Cir. 2015) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc)). This general rule has two known exceptions: (1) “when a patentee sets out a definition and acts as his own lexicographer, ” or (2) “when the patentee disavows the full scope of the claim term either in the specification or during prosecution.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (quoting Thorner v. Sony Comput. Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Where a claim term has more than one “ordinary” meaning, or when reliance on a term's “ordinary” meaning does not resolve the parties' dispute, a determination that a claim term “needs no construction” or has the “plain and ordinary meaning” may be inadequate. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008).

         “To determine the scope and meaning of a claim, we examine the claim language, written description, prosecution history, and any relevant extrinsic evidence.” InTouch Techs., Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1339 (Fed. Cir. 2014) (citing Phillips, 415 F.3d at 1315-19); Markman, 52 F.3d at 978-79.

Apart from the claim language itself, the specification is the single best guide to the meaning of a claim term. And while the prosecution history often lacks the clarity of the specification, it is another established source of intrinsic evidence. After considering these three sources of intrinsic evidence, a court may also seek guidance from extrinsic evidence. However, extrinsic evidence may be less reliable than the intrinsic evidence.

Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014) (citations and internal quotation marks omitted).

         B. Intrinsic Evidence

         1. Specification

         “The specification is fundamental to claim construction, as it is the single best guide to the meaning of a disputed term.” Trading Techs. Int'l, Inc. v. Open E Cry, LLC, 728 F.3d 1309, 1319 (Fed. Cir. 2013) (quoting Phillips, 415 F.3d at 1315). In determining the meaning to be given to claim terms, a court must read the terms in the context of the specification as it is the patent specification which, by statute, must contain a “full, clear, concise, and exact” description of the invention. 35 U.S.C. § 112(a); accord Phillips, 415 F.3d at 1311. Consequently, “claim terms must be construed in light of the specification and prosecution history, and cannot be considered in isolation.” GE Lighting Sols., 750 F.3d at 1308-09 (citing Phillips, 415 F.3d at 1313).

         Although claim terms are normally given their ordinary and customary meaning, a patentee may depart from this rule by acting as his own lexicographer or by disavowing the claim scope in the specification. Phillips, 415 F.3d at 1316. “Idiosyncratic language, highly technical terms, or terms coined by the inventor are best understood by reference to the specification.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1321 (Fed. Cir. 2013) (citing Phillips, 415 F.3d at 1315-16). To use a special definition of a claim term, the patentee must “clearly” redefine the term and have an “express intent” to do so within the patent. Thorner, 669 F.3d at 1365-66; Elekta Instrument S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000).

         Courts must “not read limitations from the embodiments in the specification into the claims.” Hill-Rom, 755 F.3d at 1371 (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004)). This requirement prevents a court from limiting the scope of the claims to only the preferred embodiment or specific examples disclosed in the specification. Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014) (“[I]t is improper to read limitations from a preferred embodiment described in the specification- even if it is the only embodiment-into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.” (quoting Liebel-Flarsheim, 358 F.3d at 913)). “If the intrinsic record supports several definitions of a term, the term may be construed to encompass all such consistent meanings . . . . Therefore, absent a clear disavowal or alternative lexicography by a patentee, he or she ‘is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning.'” Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., No. 2015-2078, 2017 WL 1228579, at *7 (Fed. Cir. Apr. 4, 2017) (internal citations omitted). “By the same token, the claims cannot ‘enlarge what is patented beyond what the inventor has described in the invention.'” Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (quoting Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003)).

         2. Prosecution History

         “A court should also consider the patent's prosecution history, if it is in evidence. The prosecution history consists of the complete record of the proceedings before the [U.S. Patent and Trademark Office].” In Touch Techs., 751 F.3d at 1341 (citations and internal quotation marks omitted). “[P]rosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1350 (Fed. Cir. 2013) (alteration in original) (quoting Phillips, 415 F.3d at 1317). A court “does not rely on the prosecution history to construe the meaning of the claim to be narrower than it would ...


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