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Ultra-Mek, Inc. v. United Furniture Industries, Inc.

United States District Court, M.D. North Carolina

September 26, 2019

ULTRA-MEK, INC., Plaintiff and Counter-Defendant,
v.
UNITED FURNITURE INDUSTRIES, INC., OISEYS INTERNATIONAL, INC., MAN WAH HOLDINGS LTD., JIANGSU YULONG SMART TECHNOLOGY CO., LTD., REMACRO MACHINERY TECHNOLOGY CO., LTD., TAIZHOU CHENGUANG VEHICLE CO., LTD., Defendants and Counter-Claimants. Plaintiff’s Construction Defendants’ Construction Term (Claim #s) Plaintiff’s Construction (generally) Defendants’ Construction (generally) Court’s Construction

          MEMORANDUM OPINION AND ORDER

         Plaintiff Ultra-Mek, Inc., has sued Defendants for allegedly infringing two patents that cover reclining chairs with reciprocating capability. Defendants have answered the complaint and filed counterclaims: (1) requesting a declaratory judgment that their products do not infringe the subject patents, and (2) alleging that the subject patents are invalid. This court held a Markman hearing on August 14, 2019, and heard argument from the parties regarding construction of the four disputed claim terms in the subject patents. After considering the arguments of counsel and the parties’ claim construction briefs, this court construes the disputed terms as follows.

         I. FACTUAL & PROCEDURAL BACKGROUND

         Plaintiff Ultra-Mek, Inc. is the assignee and owner of two patents that each describe a reclining chair with reciprocating capability. (First Amended Complaint (“Am. Compl.”) (Doc. 31) ¶¶ 22–25.) Both patents were invented by D. Stephen Hoffman and Marcus Murphy. (Id. ¶¶ 23-34) U.S. Patent Number 8, 016, 348 (the “‘348 patent”) was filed on July 24, 2009 and issued on September 13, 2011. (See Doc. 31-1.) U.S. Patent Number 8, 297, 693 (the “‘693 patent”) was filed on September 9, 2011 and issued on October 30, 2012. (See Doc. 31-2.) The ‘693 patent is a continuation of the ‘348 patent, and the parties agree that the patents are generally identical in nature and scope. (See Defs.’ Opening Claim Constr. Br. (“Defs.’ Opening Br.”) (Doc. 92) at 13[1]; Pl.’s Corr. Opening Claim Constr. Br. (“Pl.’s Opening Br.”) (Doc. 94) at 6.)

         Plaintiff alleges that Defendants are producing and selling seating units that infringe the relevant patents without Plaintiff’s permission. (Am. Compl. (Doc. 31) ¶ 26.) Plaintiff further alleges that this infringement has continued despite Defendants’ knowledge of the patents and that certain Defendants have posted YouTube videos that demonstrate how to construct chairs using patented mechanisms. (Id. ¶¶ 28, 31, 34.) Finally, Plaintiff alleges that certain Defendants violated a permanent injunction issued in a prior case in this district by importing and selling recliners covered by that injunction and breached the settlement agreement in that case. (Id. ¶¶ 41–47, 66–67.) Defendants answered the Amended Complaint, denied that their products infringe the subject patents, and brought counterclaims against Plaintiff. (See generally Docs. 38, 39.)

         Plaintiff moved for claim construction of certain disputed terms in the subject patents, (Doc. 91), and the parties submitted a consent motion for a claim construction, or Markman, hearing, (see Doc. 90.) This court held a Markman hearing on August 14, 2019. (See Minute Entry 08/14/2019.)

         II. LEGAL FRAMEWORK

         In Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (“Markman II”), the Supreme Court clarified which issues in a patent trial are properly reserved for the jury, and which are questions of law to be determined by the court. Specifically, the Court held that interpretation of language in patent claims “is an issue for the judge, not the jury[.]” Id. at 391. The Federal Circuit has provided further guidance on how to interpret patent claims, stating that, in general, courts are to give the words of a claim “their ordinary and customary meaning” as understood by “a person of ordinary skill in the art in question at the time of the invention[.]” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citations omitted).

         A. Types of Evidence

          When construing claim terms, courts are directed to consult several specific types of evidence to discern what a person of ordinary skill in the art would understand the term to mean.

         Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to “those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.” Those sources include “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. at 1314 (citations omitted).

         First, “the claims themselves provide substantial guidance as to the meaning of particular claim terms.” Id. (citation omitted). “To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Id. Federal Circuit case law “provide[s] numerous . . . examples in which the use of a term within the claim provides a firm basis for construing the term.” Id. (citations omitted).

Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims. Differences among claims can also be a useful guide in understanding the meaning of particular claim terms. For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.

Id. at 1314-15 (citations omitted). “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.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citation omitted).

         The second type of evidence the court should consider is the specification, which “contains a written description of the invention that must enable one of ordinary skill in the art to make and use the invention.” See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996) (“Markman I”); see also Phillips, 415 F.3d at 1315. “Claims must be read in view of the specification, of which they are a part.” Markman I, 52 F.3d at 979 (citations omitted). The claims define the invention, but “the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citation and internal punctuation omitted). “For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims.” Markman I, 52 F.3d at 979 (citation omitted). “[A] patentee is free to be his own lexicographer[, but] . . . any special definition given to a word must be clearly defined in the specification.” Id. at 980 (citations omitted). “[C]laims are not to be interpreted by adding limitations appearing only in the specification. . . . [P]articular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments.” Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (citations omitted). A limitation from the specification should only be read into the claims when the specification requires that limitation. See id.

         The third type of evidence that a court should consider is the patent’s prosecution history.[2] See Phillips, 415 F.3d at 1317; see also Markman I, 52 F.3d at 980; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “This undisputed public record of proceedings in the Patent and Trademark Office is of primary significance in understanding the claims.” Markman I, 52 F.3d at 980 (citation and internal punctuation omitted). “The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution. Claims may not be construed one way in order to obtain their allowance and in a different way against accused infringers.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (citations omitted).

         There are two relevant exceptions to the general rule that claim terms “are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art[.]” Thorner, 669 F.3d at 1365 (citation omitted).

First, the claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history. Second, a claim term will not carry its ordinary meaning if the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.

CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002) (citations omitted); see also Thorner, 669 F.3d at 1365.

         The redefinition of a claim term must be clear “so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.” Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) (citations omitted). However, redefinition need not be explicit. Id. “[T]he specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.” Id. (citation and internal punctuation omitted); see also Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1364 (Fed. Cir. 2016).

         “The party seeking to invoke [the] prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063–64 (Fed. Cir. 2016) (internal punctuation omitted); see also Omega Eng’g, Inc., v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (stating that a disclaimer occurs where the “patentee has unequivocally disavowed a certain meaning to obtain his patent”). The disavowal must be clear and may not be “too vague or ambiguous[.]” Omega Eng’g, 334 F.3d at 1325 (citation omitted).

         Evidence from sources other than the claims, the specification, and the prosecution history is extrinsic and generally should be relied upon only when the intrinsic evidence fails to resolve any ambiguity in a disputed term. See Vitronics, 90 F.3d at 1583; see also Phillips, 415 F.3d at 1318-19. Extrinsic evidence is subject to limitations because it is inherently less reliable:

First, extrinsic evidence by definition is not part of the patent and does not have the specification’s virtue of being created at the time of patent prosecution for the purpose of explaining the patent’s scope and meaning. Second, while claims are construed as they would be understood by a hypothetical person of skill in the art, extrinsic publications may not be written by or for skilled artisans and therefore may not reflect the understanding of a skilled artisan in the field of the patent. Third, extrinsic evidence consisting of expert reports and testimony is generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence. . . . Fourth, there is a virtually unbounded universe of potential extrinsic evidence of some marginal relevance that could be brought to bear on any claim construction question. . . . Finally, undue reliance on extrinsic evidence poses the risk that it will be used to change the meaning of claims in derogation of the “indisputable public records consisting of the claims, the specification and the prosecution history, ” thereby undermining the public notice function of patents.

Phillips, 415 F.3d at 1318–19 (citations omitted).

         Extrinsic evidence includes “expert and inventor testimony, dictionaries, and learned treatises.” Markman I, 52 F.3d at 980. A court may use extrinsic evidence to aid its understanding of a patent, but “not for the purpose of varying or contradicting the terms of the claims.” Id. at 981 (citations omitted). Accordingly, the Federal Circuit has stated that:

expert testimony, whether it be of an attorney, a technical expert, or the inventor, on the proper construction of a disputed claim term . . . may only be relied upon if the patent documents, taken as a whole, are insufficient to enable the court to construe disputed claim terms.

Vitronics, 90 F.3d at 1585 (emphasis omitted). In such “rare instances, ” prior art documents and dictionaries are preferable to expert testimony because they are objective, reliable, and “accessible to the public in advance of litigation.” Id.

         B. Other Interpretive Issues

         1. Lay Terms

         While court construction of lay terms might intrude into the province of the jury, see Markman II, 517 U.S. at 384, the Federal Circuit has directed district courts to interpret any claim term, including a commonly-used lay term, whose meaning is in legitimate dispute. See O2 Micro Int’l v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). When a term has an ordinary, lay meaning that is not legitimately in dispute, no construction is required and the court may submit the claims to a jury. See, e.g., Biotec Biologische Naturverpackungen GmbH & Co. v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001). However, a term may have more than one “ordinary meaning” and, where the parties dispute which “lay” meaning should govern, the court has a duty to construe the disputed term. See Eon Corp. IP Holdings, LLC v. Silver Spring Networks, Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016), __U.S.__, 137 S.Ct. 640 (2017).

         2. Terms of Degree

          Terms of degree are problematic because they may be indefinite for failing to “particularly . . . and distinctly” describe the invention. 35 U.S.C. § 112, ¶ 2; see also Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). A term is sufficiently definite when it “inform[s] those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). Terms of degree are not “inherently indefinite” and the inventor need not describe a term of degree with “mathematical precision.” Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017). “When a word of degree is used the district court must determine whether the patent’s specification provides some standard for measuring that degree.” Seattle Box, 731 F.2d at 826. The party arguing that a certain claim term is indefinite bears the burden of showing “by clear and convincing evidence” that those skilled in the art would not understand the term’s scope. Teva Pharms. USA, Inc., v. Sandoz, Inc., 789 F.3d 1335, 1345 (Fed. Cir. 2015).

         For commonplace terms that might be terms of degree, the Federal Circuit has directed courts to look to the intrinsic evidence - the claim terms, specification, and prosecution history - for examples that might give meaning to and define the scope of the terms. Sonix Tech., 844 F.3d at 1377 (finding that a term of degree was not indefinite where “the intrinsic evidence provided guidance as to the scope of the claims, including, inter alia, examples of noninterfering structures and criteria for their selection”); see also One-E-Way, Inc. v. Int’l Trade Comm’n, 859 F.3d 1059, 1063, 1066 (Fed. Cir. 2017); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1334–35 (Fed. Cir. 2010). Terms of degree that fail to provide “an objective baseline through which to interpret the claims” are generally void for indefiniteness. Sonix Tech., 844 F.3d at 1377–78 (describing the Datamize and Interval Licensing decisions, where the Federal Circuit invalidated terms of degree for indefiniteness); Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350–55 (Fed. Cir. 2005) (“Simply put, the definition of ‘aesthetically pleasing’ cannot depend on an undefined standard.”), abrogated by Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014).[3]

         While the Federal Circuit had previously held that any term “amenable to construction” through intrinsic evidence was not indefinite, see, e.g., Honeywell Int’l, Inc. v. Int’l Trade Comm’n, 341 F.3d 1332, 1338 (Fed. Cir. 2003), the Nautilus decision explicitly rejected that standard, see Nautilus, 572 U.S. at 912 & n.9. Rather, “[i]n the face of an allegation of indefiniteness, general principles of claim construction apply.” Datamize, 417 F.3d at 1348. The court should not consider the term’s amenability to construction on the initial pass; rather, if the court finds the disputed term is not indefinite, it should then construe that term in accordance with its ordinary meaning to a person skilled in the art.

         3. Technical Terms

         The court must construe any genuinely-disputed technical terms. However, some technical terms have well-established meanings, more akin to a glossary definition, and might not require construction in the same way as non-technical terms. “[A] general dictionary definition is secondary to the specific meaning of a technical term as it is used and understood in a particular technical field.” Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1580 (Fed. Cir. 1996). “[I]n determining the ordinary meaning of a technical term, courts are free to consult scientific dictionaries and technical treatises at any time.” Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1373 (Fed. Cir. 2001).

         4. Means-Plus-Function Terms

         “A means-plus-function limitation recites a function to be performed rather than definite structure or materials for performing that function.” Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003). A means-plus-function statement in a patent is “construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6. “Once a court establishes that a means-plus-function limitation is at issue, it must identify and construe that limitation, thereby determining what the claimed function is, and what structures disclosed in the written description correspond to the ‘means’ for performing that function.” Lockheed Martin, 324 F.3d at 1319.[4]

         The first step to the means-plus-function analysis is to determine whether § 112, ¶ 6 applies to the term at issue. When a claim term uses the word “means” to signal a component’s function, there is a rebuttable (but not a “strong”) presumption that the term is a means-plus-function phrase under § 112, ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015). “T]he presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Id. (internal quotation marks omitted). The Federal Circuit has explained that “[g]eneric terms such as ‘mechanism, ’ ‘element, ’ ‘device, ’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ . . . and therefore may invoke § 112, para. 6.” Id. at 1350.

         To determine whether a term qualifies for § 112, ¶ 6, the court must “ask if the claim language, read in light of the specification, recites sufficiently definite structure.” Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014); see also Williamson, 792 F.3d at 1349. While a specification that describes only how a component part interacts with other parts of the invention may be sufficient to impart structure, the specification must limit the claim term to a specific structure or structures. See Inventio AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350, 1358–59 (Fed. Cir. 2011) (“The written descriptions also show how the elements are connected together and to the elevator control and computing unit components of the elevator system.”), overruled by[5]Williamson, 792 F.3d 1339 (Fed. Cir. 2015); see also Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372–73 (Fed. Cir. 2015) (applying § 112, ¶ 6 when the only structural description in the specification was but one example of the disputed claim term).

         The rebuttable presumption created when the word “means” is not used in the disputed claim term places the burden on the party invoking § 112, ¶ 6 to demonstrate, through either intrinsic or extrinsic evidence, that the claim term itself (read in light of the specification) fails to recite sufficiently definite structure. See Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1297–98 (Fed. Cir. 2018) (concluding, based on arguments regarding the claim language itself, that the party invoking § 112, ¶ 6 had demonstrated through intrinsic evidence that it was proper to apply that paragraph); Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1319–20 (Fed. Cir. 2004) (“The district court should have imposed on Maxim, who advocated a construction under § 112 ¶ 6, the burden of overcoming the presumption by demonstrating that the claim fails to recite sufficiently definite structure or recites a function without reciting sufficient structure for performing that function.”) (internal quotation marks and citation omitted). If that burden is satisfied, then the claim should be construed as a means-plus-function phrase. See Williamson, 792 F.3d at 1351.

         Once the court has determined that § 112, ¶ 6 applies, it next examines “whether the specification discloses sufficient structure that corresponds to the claimed function.” Williamson, 792 F.3d at 1351. This is a two-step process: first, “[t]he court must first identify the claimed function[; second, ] . . . the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id. “It is well-established that the specification must be read as a whole to determine the structure capable of performing the claimed function.” Chi. Bd. Options Exch., 677 F.3d at 1367 (internal quotation marks and citations omitted). As the Federal Circuit has explained, an included structure is corresponding ...


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