United States District Court, D. Maryland
CHANGZHOU KAIDI ELECTRICAL CO., LTD., et al.
OKIN AMERICA, INC., et al.
CATHERINE C. BLAKE, District Judge.
Plaintiffs Changzhou Kaidi Electrical Co., Ltd. and Kaidi, LLC (collectively, "Kaidi") bring this suit against Okin America, Inc. and Dewert Okin GmbH (collectively, "Okin"), seeking a declaration that the KDPT005 linear actuator does not infringe U.S. Patent No. 5, 927, 144 ("the 144 patent"). Kaidi also seeks a judgment declaring the 144 patent invalid. Okin counterclaimed, alleging infringement of the 144 patent. A Markman hearing and tutorial was held on April 23, 2014, and this matter is now before the court for claim construction. The court shall construe the following terms: (1) surrounded (Claim 1), (2) surrounds (Claim 2), (3) guide section (Claim 1), (4) adjuster (Claim 1), (5) slider (Claim 1), (6) slider (Claim 2), (7) two parts (Claim 1), and (8) slit (Claim 1).
The court construes patent claims as a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). As explained by the Federal Circuit, "words of a claim are generally given their ordinary and customary meaning, " and "the ordinary and customary meaning of a claim term is the meaning that the term would have to 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 and internal quotation marks omitted). "A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so." Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); see also Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364, 1373 (Fed. Cir. 2005) (suggesting that the court should construe claims so the patent is "internally consistent").
To determine the ordinary and customary meaning of terms, the court looks first to intrinsic evidence and then, in its discretion, to extrinsic evidence. In considering the intrinsic evidence, "[t]he appropriate starting point... is always with the language of the asserted claim itself." Phonometrics, Inc. v. Northern Telecom Inc., 133 F.3d 1459, 1464 (Fed. Cir. 1998). Then, the court turns to the specification, which is "the single best guide to the meaning of a disputed term;" indeed, it is usually dispositive. Phillips, 415 F.3d at 1315; see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). After considering the claims and the specification, the court may look to the prosecution history if in evidence. Vitronics Corp., 90 F.3d at 1582. The prosecution history may have a more limited role in claim construction than the specification. Reliance on the prosecution history may help ensure "that claims are not construed one way in order to obtain their allowance and in a different way against accused infringers." Chimie v. PPG Industries, Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005). In other words, "where the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim congruent with the scope of the surrender." Id. (citation and internal quotation marks omitted).
When analysis of the intrinsic evidence alone does not resolve the ambiguities in a disputed claim term, the court may in its discretion turn to extrinsic evidence. See Vitronics Corp., 90 F.3d at 1583 (reasoning that it is improper to rely on extrinsic evidence when an examination of the intrinsic evidence resolves the ambiguities in a disputed claim term); see also Phillips, 415 F.3d at 1319. It is important to note, however, that extrinsic evidence "is less significant than the intrinsic record in determining the legally operative meaning of claim language." See Phillips, 415 F.3d at 1317-19 (citation and internal quotation marks omitted) (noting that the Federal Circuit has generally viewed extrinsic evidence "as less reliable than the patent and its prosecution history in determining how to read claims, " and stating that the court should keep in mind the flaws inherent in the evidence and assess it accordingly). Additionally, "[e]xtrinsic evidence is to be used for the court's understanding of the patent, not for the purpose of varying or contradicting the terms of the claims." Markman, 52 F.3d at 981.
With the above principles in mind, the court will turn to the disputed claim terms.
A. Surrounded (Claim 1) and Surrounds (Claim 2)
At the Markman hearing, Okin proposed that "surrounded" means "generally enclosed or completely enclosed, " while "surrounds" means "generally encloses or completely encloses." Kaidi, by contrast, asserts that "surrounded" means "completely or nearly completely encircled, " and that "surrounds" means "completely or nearly completely encircles." Although the parties agree that the construction must include a less-than-complete enclosure, they disagree on whether "nearly completely, " or "generally, " describes the relationship of guide sections 8 and 9 to spindle 6. See patent 144, col. 6, 11. 15-26 (emphasis added) (describing a "spindle... surrounded by a guide section... characterized in that the guide section has two parts and a slit between the two parts of the guide section"); see also id., abstract (emphasis added) (stating that "the spindle (6) is surrounded by a two-part guide section (8, 9)... a slit being kept free between the two parts of the guide section (8, 9)"). The court shall construe "surrounded" as completely or nearly completely enclosed, and "surrounds" shall be construed as completely or nearly completely encloses.
The court agrees with Kaidi that Okin's proposed construction lacks precision. The Federal Circuit has rejected proposed claim constructions that would render the claims indefinite and prevent one of ordinary skill in the art from determining their proper scope. See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1254-56 (Fed. Cir. 2008); Geneva Pharm., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003). Here, it is unclear from the word "generally" how much guide sections 8 and 9 must enclose spindle 6.
Kaidi's proposed construction, on the other hand, is more precise and finds support in the claim itself and in the specification. As quoted above, Claim 1 specifies that there is a slit between the two parts of the guide section. See patent 144, col. 6, 11. 15-26. The term "slit" implies that there is only a narrow gap between the two parts of the guide section. Indeed, Figures 1, 2, 3, 4, 7, 8, 9, 10, 11, 12, and 13 confirm that the slit is only a narrow gap and, thus, guide sections 8 and 9 nearly completely enclose the spindle.
B. Guide Section (Claim 1)
Okin proposes that "guide section" means "guide section with two parts, or guide sections, " essentially arguing that this term requires no construction. According to Kaidi, "guide section" means "component that directs and supports a moving part." Following the Markman hearing, it appears that the parties' dispute centers on whether the guide section supports a moving part. Concluding it does not, the court shall adopt the following construction: two-part component that guides a moving part.
As a preliminary matter, Kaidi is correct that the term "guide section" requires construction. The meaning of "guide section" is not readily apparent; indeed, it appears to have specialized meaning within the art. Cf. Phillips, 415 F.3d at 1314 (stating that "[b]ecause 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 engages in claim construction). Additionally, where, as here, "the parties present a fundamental dispute regarding the scope of a ...