United States District Court, D. Connecticut
MEMORANDUM OF DECISION CONSTRUING CLAIMS
Vanessa L. Bryant United States District Judge.
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
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.
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.
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].
‘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.
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.”).
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.
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.
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).
[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).
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).
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).
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)).
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.
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
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
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 ...