Floodbreak, LLC v. Art Metal Industries, LLC

          CLAIM CONSTRUCTION RULING

          STEFAN R. UNDERHILL UNITED STATES DISTRICT JUDGE

         Floodbreak, LLC (“Floodbreak”) filed suit against Art Metal Industries, LLC (“AMI”) and its principal owner, Kevin F. Biebel, ^[1] for patent infringement of United States Patent No. 9, 752, 342 (“the ‘342 patent”), pursuant to 35 U.S.C. § 271 et seq. Compl., Doc. No. 1, at ¶ 4. The ‘342 patent relates to a flood protection apparatus for underground air vents.

         Floodbreak and AMI have submitted claim construction arguments concerning three terms: (1) “stops”, as used in independent claims 1, 22, 23, and 24 of the ‘342 patent, (2) “profile”, as used in independent claims 1, 22, 23, and 24, and (3) “gravitational rotation”, as used in independent claims 23 and 24. Floodbreak has generally argued against the need for claim construction, asserting that the claim language at issue has an ordinary meaning understood by a person of skill in the art, while AMI has generally argued for more narrow definitions of the terms at issue.

         For the reasons discussed below, I find that that the terms “stops” and “profile” do not require construction because they each have an ordinary meaning to those skilled in the art. I find, however, that the term “gravitational rotation” does not have ordinary meaning to those skilled in the art, and thus requires construction. I construe that term below.

         I. Background

         Floodbreak alleges that AMI directly infringed, and continues to infringe, one or more claims of the ‘342 patent” by making, using, offering to sell, and selling innovative Mechanical Closure Devices (“MCDs”), which are covered by the ‘342 patent, and which Floodbreak therefore owns. Id. at ¶¶ 8-10. MCDs are used in ventilation ducts and serve to block flooding water from entering underground ventilation passages in the New York City subway system. Id. at ¶ 10.

         Floodbreak alleges that “AMI has copied Floodbreak's technology and partners with installers…to enter into contracts with the New York City Transit Authority to supply an MCD which has been represented as being ‘equal to the specified Flood Break unit.” Id. at ¶ 11. Floodbreak alleges that AMI continues to make, use, offer to sell, and sell Floodbreak's MCD units with full knowledge of infringement of the ‘342 patent. Id. at ¶ 19.

         Floodbreak seeks a court order permanently enjoining AMI's infringing activities. Id. at 7. Floodbreak also seeks money damages as well as costs, expenses, and reasonable attorneys' fees. Id.

         The complaint was filed on March 26, 2018. Doc. No. 1. On May 11, 2018, AMI filed an answer. Doc. No. 23. After a Rule 16 conference, a Markman claim construction hearing was scheduled. Doc. No. 28. A joint claim construction statement was filed by the parties on October 19, 2018. Doc. No. 35. A joint appendix of intrinsic evidence was filed by the parties on October 26, 2018. Doc. No. 36. Floodbreak and AMI filed opening claim construction briefs on November 19, 2018. Doc. Nos. 38 and 39. Both parties filed responses on December 18, 2018. Doc. Nos. 41 and 42. Affidavits were filed by both parties on that same day. Doc. Nos. 43, 44, and 45. I held a hearing on January 8, 2019. Doc. No. 47.

         II. Claim Construction

         As a general matter, the claims of a patent define the invention that a patentee is granted the right to exclude others from making or using, with the specification in a patent serving as a basic presentation teaching that invention. See, e.g., Innova/Pure Water Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004); Oak Technology Inc. v. International Trade Commission, 248 F.3d 1316, 1328-29 (Fed. Cir. 2001). Courts construe claims in order to resolve ambiguities and to assign meaning to claims so that a patentee's right to exclude is clearly defined. Liquid Dynamics Corp. v. Vaughan Co., 355 F.3d 1361, 1367 (Fed. Cir. 2004). Because the claims define an invention, limitations should not be read from the specification into those claims, but a claim should be read in light of the specification. Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998). This can be difficult, because “the distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice.” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005).

         In Phillips, the Federal Circuit discussed, clarified, and re-affirmed principles of claim construction, providing courts with direction in the manner in which claims should be construed. First, the claims themselves provide substantial guidance about the meaning of particular claim terms. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “[T]he context in which a term is used in the asserted claim can be highly instructive.... [T]he use of a term within the claim provides a firm basis for construing the term.” Phillips, 415 F.3d at 1314. The use of a term in one claim can help demonstrate the meaning of that term in another claim, and differences among claims can also guide understanding. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001); Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991). Notably, when a dependent claim adds a limitation that is not present in the claim on which it depends, the independent claim is presumed to be free of that limitation. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).

         Because claims are part of the patent as a whole, “claims must be read in view of the specification, of which they are a part.” Phillips, 415 F.3d at 1315 (internal quotation marks omitted) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-81 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996)). That specification is “highly relevant to the claim construction analysis ... [and is] the single best guide to the meaning of a disputed term.” Vitronics, 90 F.3d at 1582. The scope and construction of claims, then, is determined by “giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art.” Phillips, 415 F.3d at 1316 (internal quotation marks and citation omitted). In other words, the specification may indicate certain outer limits of a claim's scope, but that claim may be broader than the embodiments identified and discussed in a patent's specification.

         Here, as discussed below, the specifications in the ‘342 patent are instructive regarding the meaning and proper construction of the claim terms “stops” and “profile”. Therefore, I limit my discussion of those terms to the claims and their specifications, and do not consult the patents' prosecution histories or any extrinsic sources, such as dictionaries or trade publications. For the term “gravitational rotation”, however, the prosecution history must be examined to reach a determination, as discussed below.

         III. Discussion

         Floodbreak has generally argued against the need for claim construction, asserting that the claim language at issue has an ordinary meaning understood by a person of skill in the art. SeePhillips, 415 F.3d at 1316 (internal quotation marks and citation ...