United States District Court, D. Oregon
BOYDSTUN EQUIPMENT MANUFACTURING, LLC, an Oregon limited liability company Plaintiff,
Cottrell, Inc., a Georgia corporation, Defendant.
Stephen J. Joncus, Joncus Law PC; Andrew E. Aubertine,
Aubertine Law Group PC, Philip S. Van Der Weele, K&L
Gates LLP, One SW Columbia Street, Of Attorneys for
R. Johnson, Perkins Coie LLP, Portland, OR; Shylah Alfonso,
Ryan J. McBrayer, Cori G. Moore, and Kyle M. Amborn, Perkins
Coie LLP, J. Peter Staples and Jack R. Scholz, Chernoff
Vilhauer LLP, Of Attorneys for Defendant.
OPINION AND ORDER ON CLAIM CONSTRUCTION
MICHAEL H. SIMON UNITED STATES DISTRICT JUDGE.
action brought by Plaintiff Boydstun Equipment Manufacturing,
LLC (“Boydstun”) against Defendant Cottrell, Inc.
(“Cottrell”), Boydstun seeks a declaratory
judgment of non-infringement of U.S. Patent No. 7, 585, 140
(“the '140 patent”), among other things. The
parties disagree over the construction of two terms. On
October 6, 2017, the Court held a claim construction hearing.
Based on the parties' submissions and the arguments of
counsel, the Court construes the two disputed terms as set
infringement analysis involves two steps. First, the court
construes the asserted patent claims. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)
(en banc), aff'd, 517 U.S. 370 (1996).
Second, the factfinder determines whether the accused product
or method infringes the asserted claim as construed.
Id. The first step, claim construction, is a matter
of law. See Markman, 517 U.S. at 372; Vitrionics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996). “It is a ‘bedrock principle' of
patent law that ‘the claims of a patent define the
invention to which the patentee is entitled the right to
exclude.'” Phillips v. AWH Corp., 415 F.3d
1303, 1312 (Fed. Cir. 2005) (en banc) (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Patent
claims must precisely define the relevant invention and
thereby put both the public and competitors on notice of the
claimed invention. See Phillips, 415 F.3d at 1312.
words of a claim ‘are generally given their ordinary
and customary meaning.'” Phillips, 415
F.3d at 1312 (quoting Vitrionics, 90 F.3d at 1582).
There are two exceptions to this general rule: (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); see also Hormone Research Found., Inc.
v. Genentech, Inc., 904 F.2d 1558, 1563 (Fed. Cir. 1990)
(“It is a well-established axiom in patent law that a
patentee is free to be his or her own lexicographer and thus
may use terms in a manner contrary to or inconsistent with
one or more of their ordinary meanings.” (citation
ordinary and customary meaning “is the meaning that the
term would have to a person of ordinary skill in the art in
question at the time” of the effective filing date of
the patent application. Phillips, 415 F.3d at 1313.
This is because “inventors are typically persons
skilled in the field of the invention, ” and
“patents are addressed to and intended to be read by
others of skill in the pertinent art.” Id.
“[T]he 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, ” id., which includes
the “written description and the prosecution history,
” Medrad, Inc. v. MRI Devices Corp., 401 F.3d
1313, 1319 (Fed. Cir. 2005).
are some cases in which “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 .
. . involves little more than the application of the widely
accepted meaning of commonly understood words.”
Phillips, 415 F.3d at 1314. “A determination
that a claim term ‘needs no construction' or has
[its] ‘plain and ordinary meaning'” may be
sufficient when, for example, a term has only “one
‘ordinary' meaning or when reliance on a term's
‘ordinary' meaning . . . resolve[s] the
parties' dispute.” O2 Micro Intern. Ltd. v.
Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed.
other cases, determining a claim's ordinary and customary
meaning requires further examination. This may be because the
meaning is not “immediately apparent, ” terms
“have a particular meaning in a field of art, ”
or the patentee has used a term
“idiosyncratically.” Phillips, 415 F.3d
at 1314. In those cases, a court construing the claim will
consider “those sources available to the public that
show what a person of skill in the art would have understood
disputed claim language to mean.” Id. (quoting
Innova, 381 F.3d at 1116). Such “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. (quoting Innova, 381 F.3d
language of “the claims themselves provide substantial
guidance as to the meaning of particular claim terms.”
Id. Additionally, “[t]he context in which a
claim term is used in the asserted claim can be highly
instructive.” Id. “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.” Id. For example, “[b]ecause
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.”
Id. Courts should also interpret claim terms in a
manner that does not render subsequent claim terms
superfluous. See Stubmo v. Eastman Outdoors, Inc.,
508 F.3d 1358, 1362 (Fed. Cir. 2007) (noting that the court
has “denounced” claim construction that renders
phrases “superfluous”); Merck & Co. v.
Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir.
2005) (“A claim construction that gives meaning to all
the terms of the claim is preferred over one that does not do
addition to the claims themselves, courts must consider the
specification in construing claim terms, as the terms
“are part of ‘a fully integrated written
instrument.'” Phillips, 415 F.3d at 1315
(quoting Markman, 52 F.3d at 978). As the Federal
Circuit has stated: “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.'” Id. (quoting
Vitrionics, 90 F.3d at 1582). A patent's
“specification may reveal a special definition given to
a claim term . . . that differs from the meaning it would
otherwise possess, ” and such definition would govern.
Id. at 1316. Similarly, a specification may
“reveal an intentional disclaimer, or disavowal, of
claim scope”- and again, “the inventor's
intention, as expressed in the specification, is regarded as
dispositive.” Id. Importantly, though,
limitations from the specification should not be imported
into the claims and claims should not necessarily be confined
to the “very specific embodiments of the
invention” in the specification. Id. at 1323;
see also Douglas Dynamics, LLC v. Buyers Prod. Co.,
717 F.3d 1336, 1342 (Fed. Cir. 2013) (“While claim
terms are understood in light of the specification, a claim
construction must not import limitations from the
specification into the claims.”); Kara Tech. Inc.
v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009)
(“The patentee is entitled to the full scope of his
claims, and we will not limit him to his preferred embodiment
or import a limitation from the specification into the
claims.”). Ultimately, a court must “read the
specification in light of its purposes in order to determine
‘whether the patentee is setting out specific examples
of the invention to accomplish those goals, or whether the
patentee instead intends for the claims and the embodiments
in the specification to be strictly coextensive.'”
Decisioning.com, Inc. v. Federated Dept. Stores,
Inc., 527 F.3d 1300, 1308 (Fed. Cir. 2008) (quoting
Phillips, 415 F.3d at 1323).
addition to the text of the claims and specification, courts
“should also consider the patent's prosecution
history, if it is in evidence.” Phillips, 415
F.3d at 1317 (quoting Markman, 52 F.3d at 980);
see also Graham v. John Deere Co., 383 U.S. 1, 33
(1966) (“[A]n invention is construed not only in light
of the claims, but also with reference to the file wrapper or
prosecution history in the Patent Office.”). The
prosecution history of a patent “contains the complete
record of all the proceedings . . ., including any express
representations made by the applicant regarding the scope of
the claims.” Vitronics, 90 F.3d at 1582. The
prosecution history may “inform the meaning of the
claim language by demonstrating how the inventor understood
the invention and whether the inventor limited the invention
in the course of prosecution, making the claim scope narrower
than it would otherwise be.” Abbott Labs. v.
Sandoz, Inc., 566 F.3d 1282, 1289 (Fed. Cir. 2009)
(quoting Phillips, 415 F.3d at 1317). For example, a
patentee may make “a clear and unmistakable disavowal
of scope during prosecution, ” such as “by
clearly characterizing the invention in a way to try to
overcome rejections based on prior art.” Comput.
Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374
(Fed. Cir. 2008) (quotation marks omitted). The Federal
Circuit, however, also has cautioned that “because the
prosecution history represents an ongoing negotiation between
the PTO and the applicant, rather than the final product of
that negotiation, it often lacks the clarity of the
specification.” Phillips, 415 F.3d at 1317.
Where there is ambiguity in the prosecution history, it
should not limit the claim terms. See Inverness Med.
Switzerland GmbH v. Warner Lambert Co., 309 F.3d 1373,
1382 (Fed. Cir. 2002) (“It is inappropriate to limit a
broad definition of a claim term based on prosecution history
that is itself ambiguous.”). Ultimately, the
prosecution history “is less useful for claim
construction purposes” than the language of the claims
and specification. Phillips, 415 F.3d at 1317.
may also consider extrinsic evidence in construing a claim,
although such evidence is “less significant than the
intrinsic record in determining ‘the legally operative
meaning of claim language.'” Id. (quoting
C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
858, 862 (Fed. Cir. 2004)). Extrinsic evidence
“consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises.” Id.
(quoting Markman, 52 F.3d at 980). Specifically,
dictionaries-and particularly technical dictionaries-may aid
in a court's claim construction. See id. at
1318. Expert testimony may also be useful to a court to the
extent that it “provide[s] background on the technology
at issue, [explains] how an invention works, [ensures] that
the court's understanding of the technical aspects of the
patent is consistent with that of a person of skill in the
art, or [establishes] that a particular term in the patent or
the prior art has a particular meaning in the pertinent
field.” Id. Expert testimony, however,
consisting of “conclusory, unsupported assertions . . .
as to the definition of a claim term are not useful to a
court.” Id. Further, expert testimony
“that is clearly at odds with the claim construction
mandated by the . . . written record of the patent”
should be discounted. Id. (quoting Key Pharms.
v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir.
Plaintiff and Defendant are in the business of manufacturing
and selling commercial car haulers. Their products are well
known to drivers and passengers alike: commercial car
haulers, of which there are about fifteen thousand in the
United States, are used to transport up to ten vehicles,
stacked on top of one another, all over the country. Passing
drivers may wonder just how all of those cars remain in
place; the answer, in part, is the subject of this
process of manufacturing a commercial car hauler involves
many specialized components that are built into a truck
chassis (i.e., a frame) and trailer and are part of
the commercial car hauler design itself. Some of these
specialized components involve patented features. Two
integral components, which are relevant to this case, are a
tie-down system for fastening cars and a ratcheting winch for
the tie-down system.
tie-down systems-i.e., those built before or without
the mechanisms at issue in this case-also require operators
to secure the vehicles being transported to the hauler doing
the transporting using tie-down straps tightened with
ratcheting winches. These ratchets consist of a gear with
teeth that engage a pawl, allowing the gear to rotate in one
direction only. Welded to the gear is a ratchet head with a
series of cross-holes, and the gear and head together are
attached to a shaft. Operators, when loading cars, insert a
bar into the head and gear through the cross-holes, using the
shaft to wind a strap and secure the vehicle. With this type
of mechanism, the ratchet head can only be turned in one
direction. An operator may have to remove the bar, reinsert
it in a cross-hold, and repeat the turning process-possibly
several times-in order to completely secure a vehicle.
March 27, 2008, Cottrell sought to patent a ratcheting winch
through an expedited review process with the U.S. Patent and
Trademark Office (“PTO”). The PTO issued U.S. Patent
No. 7, 585, 140 (“'140 patent” or
“ratcheting winch patent”) on September 8, 2009.
The ratchet that is the subject of Cottrell's '140
patent speeds up the tie-down process by allowing operators
to completely tighten the straps by inserting the tie down
bar only once. It accomplishes this by allowing the ratchet
head to move in two directions, rather than one. In this
model, the ratchet head and ratchet gear move independently
of one another. Between the ratchet head and ratchet gear are
“drive bodies, ” which are spring-loaded pins.
The drive bodies are inserted into depressions in the head
and corresponding ramped pockets in the gear. The pockets
have a ramp on one side and a “wall” on the
other. When the ratchet head is rotated in one direction, the
spring-loaded drive bodies engage, move along the ramps, and
are stopped by the walls in the pockets of the gear; this in
turn causes the gear to rotate. When turned the other way,
the head rotates independently of the gear.
February 2016, Boydstun introduced a Rapid Ratchet™
winch, which similarly helps drivers to more quickly and
easily tie vehicles down by allowing them to tighten straps
around wheels without having to remove and replace the bar
into the ratchet head with each quarter-turn. On March 31,
2016, Cottrell sent Boydstun a demand letter, asserting that
Boydstun's Rapid Ratchet™ winch infringed
Cottrell's '140 patent. On February 21, 2017,
Boydstun filed a petition for Inter Partes Review
(“IPR”) with the Patent Trial and Appeal Board
(“PTAB”). Boydstun asserted in that petition that
all claims in Cottrell's '140 patent are obvious on
two grounds: over Ruan (a prior art patent) in view of
Cottrell's own prior patent, U.S. Patent No. 5, 314, 275
(“'275 patent”); and over Boice (a prior art
patent) in view of Ruan. On August 30, 2017, the PTAB granted
the petition and instituted an IPR proceeding, after finding
a reasonable likelihood that Boydstun would prevail in its
parties dispute the meaning of two terms in the '140
patent: “mechanical contact” and
“coupled.” The relevant claims ...