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Lippert Components Manufacturing, Inc. v. Morryde International Inc.

United States District Court, N.D. Indiana, South Bend Division

August 17, 2018




         Plaintiff Lippert Components Manufacturing, Inc. and Backsaver International, Inc. d/b/a/ Gorilla-Lift[1] allege that Defendants MORryde International, Inc. and MOR/ryde, Inc. have infringed and induced the infringement of U.S. Patent No. 6, 550, 840 (filed on December 28, 1999, and issued to inventor David Rayburn on April 22, 2003), referred to as the ‘840 patent [DE 22-1]. The patented invention concerns liftgate assist technology known as “Gorilla-Lift”®.[2]The patent has 18 claims, with claims 1, 11, 17, and 18 being independent. Lippert asserts that claims 1, 6-7, 10-12, and 14-15 of the ‘840 patent are being infringed (hereinafter “the pertinent claims”). The “accused instrumentality” concerns Defendants' product known as the Zero Gravity (or Zero-G) Ramp Door [DE 22-2; DE 59-2]. The parties have narrowed the dispute to 11 terms/phrases that require construction.[3] A key to the dispute is whether the lifting assembly is limited to a horizontal orientation, which primarily concerns the disputed terms “tailgate lift(ing) assembly, ” “housing, ” and “side rail.” Defendants also contend that many of the disputed terms are indefinite under 35 U.S.C. § 112(b).

         I. Legal Standard

         As a matter of law, the court must construe the claims of the patent for the jury. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977 (Fed. Cir. 1995). Claim construction is crucial because it “defines the scope of the protected invention.” Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 619 (Fed. Cir. 1995).

         In interpreting a disputed claim, the court must first look at the intrinsic evidence of record-the patent itself, including the claims, the specification, and (if in evidence) the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The process begins with the words of the claims. Teleflex, Inc. v. Ficosa North American Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002). “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) (internal quotations and citations omitted); Teleflex, 299 F.3d at 1324 (“The claim language defines the bounds of claim scope.”). Absent an express intent otherwise, claim terms should be given “the ordinary and customary meaning . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.”[4] Phillips, 415 F.3d at 1313. “[T]he context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms.” ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003).

         However, the claims do not stand alone and they “must be read in view of the specification, of which they are a part.” Phillips, 415 F.3d at 1315 (quoting Markman, 52 F.3d at 979). The specification includes the drawings and the written description of the invention. Playtex Products, Inc. v. Procter & Gamble, Co., 400 F.3d 901, 909 (Fed. Cir. 2005). 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 (quoting Vitronics, 90 F.3d at 1582). It can resolve ambiguities between the ordinary and customary meaning of words if the words used in the claim are not sufficiently clear to allow the scope of the claim to be determined from words alone. Teleflex, 299 F.3d at 1325. Yet, there's a difference “between using the specification to interpret the meaning of a claim, ” which is permissible, and “importing limitations from the specification into the claim, ” which is not. Phillips, 415 F.3d at 1323. “[T]he general principle is that limitations from the specification are not to be read into the claims.” Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988) (citation omitted).

         Finally, the court must look to the patent's prosecution history, which “consists of the complete record of the proceedings before the [USPTO] and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317. “The prosecution history can often 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.” Id. A patentee may modify the “meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution.” Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006).

         Nonetheless, if intrinsic evidence does not resolve the ambiguity in a disputed claim term, the court may then look to extrinsic evidence, such as expert testimony, inventor testimony, dictionaries, and treatises. Vitronics, 90 F.3d at 1584. Extrinsic evidence may help the court better understand “the way in which one of skill in the art might use the claim terms.” AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374, 1380 (Fed. Cir. 2005) (citations omitted). But extrinsic evidence may not be used to “contradict any definition found in or ascertained by a reading of the patent documents.” Phillips, 415 F.3d at 1322-23 (quoting Vitronics, 90 F.3d at 1584, n.6). As the Federal Circuit explained in Phillips: “Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.” Id. at 1316 (citation omitted).

         II. Claim Construction

         A. Horizontal Orientation (as it relates to the “tailgate lift(ing) assembly, ” the “housing, ” and the “side rail”)

         It is undisputed that the products accused of infringement in this case generally have a vertical orientation. Thus, it is unsurprising that a significant dispute has arose over whether the patented tailgate lifting assembly is limited to a horizontal orientation. Per the parties, this issue concerns the terms “tailgate lift(ing) assembly, ” “housing, ” and “side rail.”

         Defendants argue that the patentee limited his invention to a horizontal apparatus on top of the side rail of a trailer because the specification (including the Summary of the Invention, the Description of the Drawings, and the Detailed Description of the Preferred Embodiment) repeatedly refer to the “tailgate lift assembly of the present invention” and indicate that the invention is placed on the upper portion of the side wall or rail of the trailer (1:62-65; 2:7-10, 37-43, 50-60; 2:66-3:1; 3:4-7, 27-32; 5:30-32; FIGS. 1-6). Defendants assert that the inventor also described his invention using terminology only applicable to a separate horizontal apparatus, such as, “bottom portion of the housing, ” “top portion, ” “top wall, ” and “length” (3:27-32, 4:51-57, 5:30-34, 67), as opposed to using other terms such as “front, ” “back, ” “height, ” or more generic terminology, such as, “side A.”[5] Defendants further argue that the patent's prosecution history reveals that the United States Patent Office (“PTO”) considered the ‘840 patent to be limited to a horizontal apparatus because it allowed the issuance of U.S. Patent No. 7, 347, 476 (“the Luehr patent”), stating that the prior art of record (including the ‘840 patent) did not disclose a “lift cable extending into the lower region of the upright frame.” [DE 62-3]. Taking each of the defense's arguments in turn, the Court explains why it finds them unavailing.

         First, a review of the claims in the ‘840 patent reveals that the word “horizontal” is never used and that the claim language does not require a horizontal orientation. See Phillips, 415 F.3d at 1312 (noting that the claims of a patent define the invention) (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Specifically, claim 1 of the ‘840 patent does not require that the claimed tailgate lifting assembly be oriented in any particular way and only describes a housing as having a “pre-determined length.” Claim 11 requires that the claimed “tailgate lift assembly” “extend[] along at least one” of two “side rails” of a “trailer.” But these references do not require that either the lift assembly or the “side rails” be oriented only horizontally. Moreover, none of the remaining pertinent claims (all of which are dependent claims) add a horizontal limitation or other language implying such a limitation. Thus, the express claim language does not indicate that the pertinent claims should be limited to a horizontal orientation.

         Second, Defendants want the Court to read a limitation from the specification into the pertinent claims, but this is considered to be “one of the cardinal sins of patent law.” See Phillips, 415 F.3d at 1319-20. It is axiomatic that “a court may not read a limitation into a claim from the specification.” Innova/Pure, 381 F.3d at 1117. Thus, even if the specification had referred to the ability of the tailgate lift(ing) assemblies to be placed or mounted horizontally, Defendants' attempts to limit the claims to such an orientation would be improper. See Phillips, 415 F.3d at 1310 (reversing Federal Circuit panel's claim construction for improperly relying on the specification to limit the claim term “baffles, ” by construing it to exclude structures angled at 90 degrees where no such limitation appeared in the claim language). While it is true that the Figures of the preferred embodiment depict the invention oriented horizontally, and the Detailed Description which describes the Figures repeatedly refers to the “present invention, ” in this case, that does not mean that all of the claims must be so limited. See, e.g., Agfa Corp. v. Creo Prods. Inc., 451 F.3d 1366, 1376-77 (Fed. Cir. 2006) (noting that without any indication beyond the necessary depiction to suggest limiting the invention to this single embodiment (concerning a “stack” arranged in a particular manner), the broader language of the claims cannot carry the unexpressed and unintended limitation of a horizontal arrangement of stacks). Here, the ‘840 patent explicitly states that its Figures show, “by way of example” (2:45-62), what is subsequently described in the “Detailed Description of the Preferred Embodiment” of the invention (2:63-5:64).[6] In other words, the Figures only serve as exemplars of the invention and do not serve as a basis for limiting the claims to the preferred embodiment. And although the “Summary of the Invention” describes “the present invention, ” it does not then reference the Figures.

         Moreover, the inventor described prior art that used spring-type devices and hydraulic means for raising and lowering gates “from a vertical and horizontal position” (1:37-42)-thus, the inventor knew and understood how to describe this type of device with respect to vertical and horizontal orientation, but didn't provide such a limitation with respect to his patent. See, e.g., Teleflex, 299 F.3d at 1328 (Fed. Cir. 2002) (noting that in the circumstances of this case the record is devoid of “clear statements of scope” limiting the term appearing in claim 1 to having a particular characteristic; and thus, the court is “constrained to follow the language of the claims, rather than that of the written description”).

         The Court also notes that the patentee did not set out a definition and act as his own lexicographer, or disavow the full scope of the claim terms either in the specification or during prosecution. See Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016). The specification does not use the word “horizontal;” the specification describes, and the Figures depict, “by way of example, ” aspects of a “preferred embodiment” of the invention, 2:48, 63-65, which does not limit the claims. Phillips, 415 F.3d at 1323; Agfa Corp., 451 F.3d at 1376-77. For that reason, neither that description nor what the drawings depict meet the “exacting” criteria for lexicography or disclaimer. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014).

         As to extrinsic evidence, Defendants' speculation on whether, how, and to what extent the PTO might have reviewed the earlier ‘840 patent during the prosecution of the later, unrelated Luehr patent (which involved a ramp door and “frame assembly”), provides no indication of how a PHOSITA may have used a claim term in the ‘840 patent. See e.Digital Corp. v. Futurewei Techs., Inc., 772 F.3d 723, 726 (Fed. Cir. 2014) (“While the '108 patent may incorporate by reference the '774 patent as prior art, it does not change the fact that the patents are not related”); Abbott Labs. v. Dey, L.P., 287 F.3d 1097, 1104 (Fed. Cir. 2002) (finding the relationship between two unrelated patents, although having common subject matter, a common inventor, and the same assignee, “insufficient to render particular arguments made during prosecution of [one of the patents] equally applicable to the claims of [the other patent]”). Moreover, statements made during prosecution of a later, unrelated patent cannot be used to interpret claims of the asserted patent. See Pfizer, Inc. v. Ranbaxy Laboratories Ltd., 457 F.3d 1284, 1286, 1290 (Fed. Cir. 2006). Thus, the Court reaches the limited conclusion that the terms “tailgate lift(ing) assembly, ” “housing, ” or “side rail” do not require a horizontal orientation limitation in the pertinent claims.

         Finally, at this time the Court declines to find that a vertical orientation would render the invention inoperable. Defendants' conclusory argument on this point, premised on speculation and unsupported by any evidence, is insufficient to determine whether a vertical orientation would render the invention inoperable. See Trumbull v. Kirschbraun, 67 F.2d 974, 980 (C.C.P.A. 1933) (the burden is to prove the inoperability of the invention, and if one fairly practicing the disclosure, with the aid of the known art, is successful in attempting to operate the mechanism, that is sufficient); see also EMI Grp. N. Am., Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1348-49 (Fed. Cir. 2001) (addressing the burden of proof associated with showing inoperability).

         B. Indefiniteness

         Defendants assert that seven of the eleven disputed terms/phrases are indefinite, which are identified as follows:

a. “tailgate lift(ing) assembly;”
b. “said cable extending substantially through said housing;”
c. “roller” / “roller guide member;”
d. “tailgate causing said spring to stretch upon lowering of said tailgate” / “lowering of said tailgate causes said spring to stretch;”
e. “housing having a pre-determined length;”
f. The language of claim 7 (that is, “The tailgate lifting assembly of claim 6 further comprising a trailer and a tailgate, said lifting assembly affixed to said trailer, said tailgate hingedly connected to said trailer.”); and,
g. The language of claim 14 (that is, “The assembly of claim 11 wherein said tailgate lifting assembly is comprised of a first tailgate lifting assembly and a second tailgate lifting assembly, said first tailgate lifting assembly extending along said first side rail of said trailer, said second tailgate lifting assembly extending along said second side rail of said trailer.”).

         Relative to claim definiteness, 35 U.S.C. § 112(b) states that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” Most recently, the Supreme Court of the United States in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014) held that a patent claim is indefinite if it is shown by clear and convincing evidence that the claim, read in the light of the specification and the prosecution history, fails to inform those skilled in the art about the scope of the invention “with reasonable certainty.” This test “mandates clarity, while recognizing that absolute precision is unattainable.” Nautilus, 134 S.Ct. at 2128-29. Indefiniteness is a matter of claim construction, and the same principles that generally govern claim construction are applicable to determining whether allegedly indefinite claim language is subject to construction. Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008). Indefiniteness, like claim construction, is a question of law. Id. A court may rely on expert testimony in determining whether a claim term is indefinite. See, e.g., Berkheimer v. HP Inc., 881 F.3d 1360, 1364 (Fed. Cir. 2018).

         In support of their indefiniteness argument, Defendants submit only attorney argument and appear to rely only on the patent's intrinsic evidence. Lippert contends that this is insufficient because Defendants cannot meet their evidentiary burden without expert testimony. But Lippert's position sweeps too broadly.

         While it is true that expert testimony may be required with respect to complex inventions, see, e.g.,, Inc. v. SAP AG, 745 F.3d 490, 503 (Fed. Cir. 2014), vacated, 564 Fed.Appx. 599 (Fed. Cir. 2014) (noting that typically expert testimony will be necessary in cases involving complex technology), it is also true that in a case like this, involving a less complex patent, the Court can determine whether a claim is indefinite via the intrinsic evidence alone. See, e.g., Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1335 (Fed. Cir. 2010) (involving patents-in-suit that were directed to various techniques for labeling and detecting nucleic acids, wherein the Court held: “Because the intrinsic evidence here provides ‘a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine [the scope of the claims],' the claims are not indefinite.”) (internal citation omitted).

         And although Defendants did not offer any expert evidence, Lippert has provided the declaration and testimony of their technical expert, Dr. Charles Reinholtz. In his declaration [DE 46-1], Dr. Reinholtz indicated that based on his education, experience, and investigation, the disputed claim terms are definite, and that a PHOSITA would have understood the terms to have their plain and ordinary meanings (as set forth in his declaration and parroted in Lippert's proposed construction of each and every disputed term). Such unrebutted evidence shall be credited, to the extent it is not conclusory or at odds with the intrinsic evidence, as detailed below with respect to each disputed term. See SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1195 (Fed. Cir. 2013); Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1361 (Fed. Cir. 2005).

         Accordingly, bearing these principles in mind, the Court addresses each of the eleven disputed claim terms below, including the seven terms identified by Defendants as being indefinite.

         C. Disputed Terms

         a. “tailgate lift(ing) assembly”

         The pertinent claims that include the disputed term “tailgate lift(ing) assembly” consist of independent claims 1 and 11, as well as dependent claims 6-7 and 10 (which ultimately depend from claim 1), and dependent claims 14-15 (which ultimately depend from claim 11). The parties agree that an object of the tailgate lifting assembly is to allow the ease of raising and lowering a tailgate, but they dispute whether the claimed “tailgate lift(ing) assembly” is a self-contained device, or just any generic “structure” and whether the claimed “tailgate lift(ing) assembly” must include a trailer. Specifically, Lippert argues that the term “tailgate lift(ing) assembly” should be construed to mean “a self-contained device that at least provides a closing force to a tailgate.” ...

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