Wiremold Co. v. Thomas & Betts Corp.

          MEMORANDUM OF DECISION CONSTRUING CLAIMS

          Hon. Vanessa L. Bryant United States District Judge.

         I. Introduction

         Before the Court are the parties' proposed constructions of the claims at issue in this patent infringement case filed by Wiremold Co. (“Wiremold” or “Plaintiff”) against Thomas & Betts Corp. (“T&B, ” “Thomas & Betts, ” or “Defendant”) alleging T&B infringed Wiremold's patents for in-floor electrical outlet boxes known as “poke-through fittings” - U.S. Patent No. 7, 183, 503 (“the ‘503 Patent”) and U.S. Patent No. 8, 063, 317 (“the ‘317 Patent”). Plaintiff seeks declaratory judgment that Defendant infringes the ‘503 and ‘317 patents, an injunction against future infringement, money damages with interest, and attorney fees. [Dkt. No. 55 (Am. Compl.) at 6-7].

         The parties filed separate disputed claim terms charts on December 27, 2017. [Dkt. 73 (Plaintiff's Disputed Claim Terms Chart); Dkt. 74 (Defendant's Disputed Claim Terms Chart)]. The Court adopted Wiremold's submission as the operative claim terms chart. [Dkt. 79]. The court held a Markman hearing on July 24, 2018 [Dkt. 89] and now construes the disputed claims.

         II. Background

         A. The Parties

         Plaintiff Wiremold manufactures “poke-through” fittings, which are “in-floor fitting[s] for providing access to an underfloor electric distribution system.” [Dkt. 55-1, at 1]. These poke-through fittings are designed to be installed in an opening in a floor to provide access to an outlet below the floor. [Dkt. 82 (Defendant's Markman Brief), at 1]. The fittings typically include “intumescent material” which expands when heated to prevent fire from spreading out of the fitting. [Id.]. Plaintiff owns both the ‘317 Patent and the ‘503 Patent at issue in this case. [Dkt. 83 (Plaintiff's Markman Brief), at 1]. Like Plaintiff, Defendant holds “several U.S. patents directed to poke-through technology.” [Dkt. 82, at 1]. One such patent is U.S. Patent Number 6, 417, 446 (“the ‘446 patent” or “Whitehead”). Plaintiff alleges that Defendant's products infringe on the ‘317 patent and the ‘503 patent.

         B. The Patents

         Both patents at issue pertain to in-floor electrical outlet boxes known as “poke-through fittings.” The ‘503 Patent was the first, issued on February 27, 2007. [Dkt. 1, ¶ 6]. The inventors intended the ‘503 Patent to improve upon the drawback that prior art “protrude[d] above the surface of the floor.” [Dkt. 82, at 6]. The specification of the patent describes “an in-floor fitting for providing access to an underfloor electric distribution system.” [Dkt. 1-1 (the ‘503 Patent specification), at 2:3-5]. This system includes “a cover configured to move between open and closed positions and being moved to an open position to allow a cable to pass through.” [Id. at 2:5-8]. The fitting also includes “a receptacle positioned below the cover and configured to operatively connect to a cable comprising at least one of an electrical cable and a communication cable, wherein the cover was substantially flush with a surface of a floor when the cable is operatively connected to the receptacle and the cover is in the closed position.” [Id. at 2:8-14]. Plaintiff alleges that the ability to plug in an electrical device while the fitting cover is closed improves upon the prior art. [Dkt. 83, at 4-5].

         The ‘317 Patent was issued on November 22, 2011. [Dkt. 1, ¶ 7]. The specification for this patent describes “a recessed electrical outlet box for mounting in a floor” that includes “a body made at least partially of intumescent material and configured to retain at least one receptacle and a retention structure receiving the body. The retention structure is configured to retain the body within a hole in the floor and contain the expansion of the intumescent material.” [Dkt. 1-2 (the ‘317 Patent specification), at 2:13-18]. Plaintiff alleges that the ‘317 Patent improves on prior art because it allows the body of the fitting to extend through and below the bottom of a concrete floor while retaining fire-retardant material. [Dkt. 83, at 10-11]. The focus of the ‘317 Patent differs slightly from that of the ‘503 patent, but the form and function of each patent is essentially the same - these are patents for fittings designed to allow a user to insert an electrical plug into a building floor while mitigating potential tripping and fire hazards.

         III. Legal Standard

         Resolution of a patent infringement case entails a two-step process, the first of which is claim construction, and the second of which is a comparison of the patented device or process to the accused device or process applying the terms as construed. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998), abrogated on other grounds; Phil-Insul Corp. v. Airlite Plastics Co., No. 2016-1982, 2017 WL 1374696, at *10 (Fed. Cir. Apr. 17, 2017) (same). Only those terms that are in controversy need to be construed, and the construction only needs to be to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Science & Eng'g, Inc., 200 F.3d 795, 804 (Fed. Cir. 1999). Claim construction, furthermore, is a question of law, and the Court has the exclusive power to construe “the meaning of the language used in the patent claim.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-79 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996); 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1321 (Fed. Cir. 2013). In re Cuozzo Speed Techs, LLC, 793 F.3d 1268, 1286 (Fed. Cir. 2015) (citing Lighting Ballast Control LLC for the principle that “[l]egal doctrine in patent law starts with the construction of the patent claims, for the claims measure the legal rights provided by the patent.”).

         If the Court is unable to determine whether a patent includes “one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention, ” the claims are “indefinite.” See 35 U.S.C. § 112(b); Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014). A claim is indefinite when “its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc., 134 S.Ct. at 2124. Claims do not survive this standard merely because “a court can ascribe some meaning to a patent's claims, ” but rather when they would be understood by “a skilled artisan at the time of the patent application[.]” Id. at 2130.

         The Court is to begin the claim construction analysis with intrinsic evidence. Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1299-300 (Fed. Cir. 2004). “Intrinsic evidence includes the claim language, the written description that precedes the claims in the patent specification, and, if in evidence, the prosecution history.” Chrisha Creations, Ltd. v. Dolgencorp, Inc., 817 F.Supp.2d 363, 366 (S.D.N.Y. 2011) (citing DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1323 (Fed. Cir. 2001)). Procedurally, when constructing patent claims, “claim terms are given their ordinary and customary meaning, as they would be understood by one of ordinary skill in the art in question at the time of the invention.” 3M Innovative Props. Co., 725 F.3d at 1321; Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). A person of ordinary skill in the art “is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. Courts must first rely only on intrinsic evidence to resolve any claim term ambiguity, and it is impermissible to use extrinsic evidence to “contradict the established meaning of the claim language.” See DeMarini Sports, 239 F.3d at 1323.

         The Patent Act requires the specification to “contain a written description of the invention, and of the manner and process of making it and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is more nearly connected, to make and use the same.” 35 U.S.C. § 112. A written description generally contains “an abstract of the invention, a description of the invention's background, a summary of the invention, patent drawings, and a detailed description that discusses preferred embodiments of the invention.” Chrisha Creations, Ltd., 817 F.Supp.2d at 367; see Dymo Costar Corp. v. Seiko Instruments USA, Inc., No. 3-00-cv-4 JHC, 2000 WL 502616, at *14 (D. Conn. Mar. 20, 2000) (listing “all parts of the specification” as “the sections detailing the background, summary, and preferred embodiment of the invention”) (citing Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356-57 (Fed. Cir. 1999)); Lamoureux v. AnazaoHealth Corp., 669 F.Supp.2d 227, 255 (D. Conn. 2009) (referring to background of the invention of the specification to determine appropriate claim construction).

         “Usually, [the specification] is dispositive; it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1314 (Fed. Cir. 2010) (quoting Phillips, 415 F.3d at 1314-15) (although claim construction is dependent on the language of the claims themselves, it requires reading that language “in view of the specification, of which they are a part”). “Idiosyncratic language, highly technical terms, or terms coined by the inventor are best understood by reference to the specification.” 3M Innovative Props. Co., 725 F.3d at 1321; see also Thorner v. Sony Comp. Entm't Am. LLC, 669 F.3d 1362, 1365-67 (Fed. Cir. 2012) (“The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.”). The Court may refer to the “descriptive part of the specification” to determine the scope and meaning where the claims are based on the description. Phillips, 415 F.3d at 1315. The specification may be used to define terms even in the absence of an “explicit definitional format, ” as it may “define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.” Trustees of Columbia Univ. in City of New York, 811 F.3d 1359, 1364 (Fed. Cir. 2016).

         “Claim terms are entitled to a ‘heavy presumption' that they carry their ordinary and customary meaning to those skilled in the art in light of the claim term's usage in the patent specification.” Elbex Video, Ltd. V. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citing SuperGuide Corp. v. DirecTV Enters. Inc., 358 F.3d 870, 874 (Fed. Cir. 2004); Omega Eng'g, Inc., v. RayTec Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003)). The only exceptions to this rule are “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “Where claim language “is comprised of commonly used terms; each is used in common parlance and has no special meaning in the art, ” “the plain and ordinary meaning of the disputed claim language is clear” and need not be construed. Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir. 2015).

         Even though the specification informs the Court as to the use of the terms in the claims, “limitations discussed in the specification may not be read into the claims.” 3M Innovative Props. Co., 725 F.3d at 1321 (citing Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1287 (Fed. Cir. 2010)). References to a preferred embodiment in a specification are not a claim limitation. Janssen Pharmaceutica N.V. v. Eon Labs Mfg., Inc., No. CV 01-2322 (NG) (MDG), 2003 WL 25819555, at *9 (E.D.N.Y. Nov. 26, 2003) (citing SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc)). That being said, “the patentee's choice of preferred embodiments can shed light on the intended scope of the claims.” Astrazaneca AB, Aktiebolaget Hassle, KBI-E, Inc. v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1340 (Fed. Cir. 2004).

         Also, the preamble language is not to be interpreted to limit the scope of the claim when it “merely states the purpose or intended use of an invention.” United Techs. Corp. v. PerkinElmer, Inc., 537 F.Supp.2d 392, 397 (D. Conn. 2008) (citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006)). The preamble may limit the claim, however, when the body of the claim “rel[ies] upon and derive[s] antecedent basis from the preamble” or if the drafter “chooses to use both the preamble and the body to define the subject matter of the claimed invention.” United Techs. Corp, 537 F.Supp.2d at 397. Determining whether the preamble is limiting must be based on “the facts of each case in light of the claim as a whole and the invention described in the patent.” Id. (quoting Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003)).

         Other claims from the patent may also be helpful to determine the meaning of a claim term, because in general claim terms are consistently used throughout the patent. Phillips, 415 F.3d at 1314. An example of this principle is where a dependent claim adds a limitation, because such a limitation creates the presumption that the limitation does not exist in the independent claim. Id. at 1314-15.

         The prosecution history is another form of intrinsic evidence relevant to claim construction, particularly where a court must consider multiple patents in one family. Similar to the specification, prosecution history reflects a patentee's “attempt[ ] to explain and obtain the patent” and evidences how the PTO and inventor understood the patent. Phillips, 415 F.3d at 1317. “A statement made during prosecution of related patents may be properly considered in construing a term common to those patents, regardless of whether the statement pre- or postdates the issuance of the particular patent at issue.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015). It is during prosecution history where an applicant may “define (lexicography), explain, or disavow claim scope during prosecution.” Id. The prosecution history is particularly important because it may demonstrate “whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Phillips, 415 F.3d at 1317. Limitation statements made during prosecution are relevant to both later and earlier issued patents. See Microsoft Corp., 357 F.3d at 1350 (“[W]e conclude that Multi-Tech's statements made during the prosecution of the #627 patent with regard to the scope of its inventions as disclosed in the common specification are relevant not only to the #627 and the [later issued] #532 patents, but also to the earlier issued #649 patent.”); Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (“When multiple patents derive from the same initial application, the prosecution history regarding a claim limitation in any patent that has issued applies with equal force to subsequently issued patents that contain the same claim limitation.”). Once such limitations are in place, “an applicant cannot recapture claim scope that was surrendered or disclaimed.” Hakim, 479 F.3d at 1317.

         Only where the intrinsic evidence alone cannot resolve claim term ambiguity may the Court also rely on extrinsic evidence, “which consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317 (citing Markman, 52 F.3d at 980) (internal quotation marks omitted). Extrinsic evidence, however, is less significant than intrinsic evidence when “determining the legally operative meaning of claim language. Id. (internal quotation marks omitted).

         Dictionaries, general and technical alike, may be helpful because they “endeavor to collect the accepted meanings of terms used in various fields of science and technology.” Phillips, 415 F.3d at 1318. “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art 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 ...