June 24, 2022
Authored and Edited by Alissa E. Green; Courtney A. Bolin; Angeline L. Premraj; Thomas L. Irving; Stacy Lewis†
In Ultra-Mek, Inc. v. United Furniture Industries, Inc., No. 1:18-cv-281, 2022 WL 1799235 (M.D.N.C. June 2, 2022), the United States District Court for the Middle District of North Carolina (“the Court”) construed the claim term “opposed first and second ends.” The Court construed this term by analyzing three sources of intrinsic evidence: the claim language, the specification, and prior art disclosed in the patents.
Ultra-Mek, Inc. (“Plaintiff”) sued United Furniture Industries, Inc. and others (“Defendants”) for infringement of patents related to a reclining chair, U.S. Pat. Nos. 8,016,348 (“the ’348 patent”) and 8,297,693 (“the ’693 patent”). Id. at *1. During the claim construction phase of the case, the Court construed disputed claim terms, but those terms did not include the phrase “opposed first and second ends.” Id.
At the summary judgment stage, the Court denied both parties’ summary judgment motions. Id. The Court dismissed Plaintiff’s literal infringement theory because the allegedly infringing mechanism “d[id] not have literal opposed ends in the format envisioned by the patent.” Id. (internal citation omitted). In response to this language, Defendants filed a motion in limine to exclude any trial testimony asserting claims were literally infringed, which the Court denied as unripe. Id. The parties agreed to file supplemental claim construction briefs regarding the phrase “opposed first and second ends.” Id.
Plaintiff’s proposed construction was “opposed first and second points on the [power actuating unit/actuating unit/linear actuating unit] that are connected to the [reclining/actuating] mechanism.” Id. at *3 (brackets in original). Defendants’ proposed construction was the “[p]lain and ordinary meaning; wherein an’ end’ is one of the lengthwise extremities of the [power actuating unit/actuating unit/linear actuating unit].” Id.
The Court first decided whether a construction of “plain and ordinary meaning” would be appropriate. The Court found that it would not because “the phrase ‘first and second opposed ends’ is less widely utilized language with a much less readily apparent common understanding and consequently may have a particular meaning to a person of ordinary skill in the art.” Id.
The Court then began its analysis with the intrinsic evidence because “[t]he intrinsic record in a patent case is the primary tool to supply the context for interpretation of disputed claim terms.” Id. at *4 (citing V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1310 (Fed. Cir. 2005)).
The first category of intrinsic evidence the Court analyzed was the claim language itself. Plaintiff argued that the disputed language referred to the functional ends of the actuator. Id. Defendants disagreed, arguing that “within the claims, ‘opposed’ modifies ‘ends,’ which makes sense when an end is understood as a lengthwise extremity, but conversely makes little sense if ends are merely points anywhere on the actuating unit.” Id. The Court was unpersuaded by the arguments of both parties and found that the claims themselves did not resolve the ambiguity of the disputed term because the claim limitation in which the phrase appears only explains what direction the ends move and when that movement occurs. Id.
Because the claim language did not resolve the dispute, the Court then examined the patents’ specifications. Plaintiff cited language from the specification in which the phrase “rear end” and “front end” were used and argued these citations showed “that the patentee knew how to restrict an ‘end’ to the front or back, i.e. to a ‘lengthwise extremity’—and deliberately chose not to do so” in the claim limitations at issue. Id. at *5. Defendants cited to usage of the word “end” that did not use a modifier and referred to lengthwise extremities of a component. Defendants also pointed to an embodiment in the specification that shows the “end” of the linear actuator, the end of rod 118, attaches to the projecting bracket 46 at pivot 122, which is at one lengthwise extremity of the actuating unit, whereas the other “end” is at pivot 120 at the other lengthwise extremity of the actuating unit. The Court found that the Defendants had a better argument. Id.
In drawing this conclusion, the Court noted that while the embodiment pointed to by Defendants was not by itself sufficient to conclude that Defendants’ construction is the correct one, “it lends support to Defendants’ construction because the patents’ specification serves as the best guide to the meaning of the disputed claim language.” Id.
The final piece of intrinsic evidence the Court evaluated was prior art cited in the patents proffered by Plaintiff. Id. The citation provided by Plaintiff did not include any terms that were included in the disputed claim limitation. As a result, the Court found the probative value of this evidence limited and “outweighed by the specification evidence supporting Defendants’ proposed construction.” Id. at *6.
Summarizing its findings, the Court emphasized that the claim language was ambiguous, and that the prior art citation had limited probative value. Id. As a result, the Court found that the specification tipped the scale in favor of Defendants’ “lengthwise extremity” construction. Id.
The Court also cited the Federal Circuit for the proposition that the specification “usually is dispositive” and found in this case that it was. Id. (citing Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). To provide greater clarity to orient the direction of “lengthwise” the Court added language to the construction: “the axis in which the [power actuating unit/actuating unit/linear actuating unit] moves forwardly and rearwardly.” Id. at *5.
In conclusion, the Court construed the term “opposed first and second ends” as “the lengthwise extremities of the [power actuating unit/actuating unit/linear actuating unit], wherein length is defined by the axis in which the [power actuating unit/actuating unit/linear actuating unit] moves forwardly and rearwardly.” Id.
A claim construction analysis always begins with intrinsic evidence. Often the first stop is the language of the claim itself. When that does not resolve the dispute, guidance from the specification is often the gold standard for claim construction because as enunciated in Phillips (quoting Vitronics), the specification, as was the case here, is often the single best guide to the meaning of the claim.
While claims should not be interpreted to add limitations that only appear in the specification, an embodiment described in the specification may lend support to a construction.
As a general rule, the ordinary and customary meaning controls unless “a patentee sets out a definition and acts as his own lexicographer, or ... the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). But, if acting as one’s own lexicographer and using a special definition, be sure to make it clear. Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324 (Fed. Cir. 2012); AIA Engineering Ltd. v. Magotteaux Intern. S/A, 657 F.3d 1264 (Fed. Cir. 2011). Who do you want to decide how a claim is construed? You? Or a district court judge or PTAB panel influenced by opposing counsel?
† Stacy Lewis is a Law Clerk at Finnegan.
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