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Boydstun Equipment Manufacturing, LLC v. Cottrell, Inc.

United States District Court, D. Oregon

October 18, 2017

BOYDSTUN EQUIPMENT MANUFACTURING, LLC, an Oregon limited liability company Plaintiff,
v.
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 Plaintiff.

          Thomas 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.

         In this 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 forth below.

         STANDARDS

         Patent 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.

         “[T]he 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 omitted)).

         The 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).

         There 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. Cir. 2008).

         In 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 at 1116).

         The 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 so.”).

         In 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).

         In 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.

         Courts 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. 1998)).

         BACKGROUND

         Both 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 litigation.

         The 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.

         Older 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.

         On March 27, 2008, Cottrell sought to patent a ratcheting winch through an expedited review process with the U.S. Patent and Trademark Office (“PTO”).[1] 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.

         In 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 claims.[2]

         CLAIM CONSTRUCTION

         The parties dispute the meaning of two terms in the '140 patent: “mechanical contact” and “coupled.” The relevant claims ...


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