Bailey v. Dart Container Corp. of Michigan

• Decision Date: 17 August 2001
• Docket Number: No. 94-10758-RCL.,94-10758-RCL.
• Citation: 157 F.Supp.2d 110
• Parties: John A. BAILEY, Plaintiff, v. DART CONTAINER CORPORATION OF MICHIGAN et al., Defendants.
• Court: U.S. District Court — District of Massachusetts

157 F.Supp.2d 110

John A. BAILEY, Plaintiff, v. DART CONTAINER CORPORATION OF MICHIGAN et al., Defendants.

No. 94-10758-RCL.

United States District Court, D. Massachusetts.

August 17, 2001.

COPYRIGHT MATERIAL OMITTED

Erik P. Belt, Lee Carl Bromberg, Lisa M. Tittemore, Anne Longobucco, Bromberg & Sunstein, Boston, MA, for John A. Bailey, Plaintiffs.

Anthony S. Fioto, Goodwin Procter LLP, Boston, Kenneth M. Reiss, R. Edward Brake, Robert A. Auchter, Julie Y. Patterson, Howrey & Simon, Scott L. Robertson, Thomas J. Scott, Thomas J. Scott, Jr., Hunton & Williams, Washington, DC, Dale A. Malone, Michael H. Shanahan, Banner & Witcoff, Ltd., Boston, MA, for Dart Container Corporation of Michigan, Defendants.

MEMORANDUM ON CONSTRUCTION OF CLAIMS

LINDSAY, District Judge.

This is a patent infringement action in which the plaintiff, John A. Bailey ("Bailey"), alleges that the defendants, Dart Container Corporation of Michigan, Dart Container Corporation, Dart Container Corporation of Pennsylvania, and Dart Container Corporation of Kentucky (collectively "Dart"), infringed Bailey's United States patents numbered 4,322,015 ("the '015 patent") and 4,473,167 ("the '167 patent"). Before a fact-finder can determine whether there has been infringement, I must first construe all of the patent claims to ascertain their meaning and scope as a matter of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). In 1994, the parties moved for summary judgment concerning infringement of the patents. These motions were assigned to Magistrate Judge Marianne B. Bowler for a report and recommendation. On April 24, 1996, Magistrate Judge Bowler issued her report and recommendation, which, among other things, construed several of the disputed claim terms. I approved and adopted Magistrate Judge Bowler's recommendations. See Bailey v Dart Container Corporation of Michigan, 980 F.Supp. 560 (D.Mass.1997) (Bailey I).¹

On March 7, 2001, the defendants moved for Markman hearing to interpret disputed terms of the asserted patent claims before trial. (Docket No. 312). On May 29, 2001, I granted the motion. (Docket No. 391). I advised the parties "to concentrate their efforts in the Markman hearing on issues of claim construction that have not been previously resolved on motions for summary judgment." Order on Defendants' Motion For Markman Hearing and Other Matters p. 2 (Docket No. 391). I also noted that the court would "entertain evidence and argument as to a matter it has previously ruled on only if the proponent can show that that ruling `is clearly erroneous and would work a manifest injustice.'" Id. (quoting Flibotte v. Pennsylvania Truck Lines, Inc., 131 F.3d 21, 25 (1st Cir.1997)). I held a five-day Markman hearing beginning on June 11, 2001. Both parties briefed their proposed claim constructions and presented evidence in support of their respective contentions. After the hearing, both parties submitted supplemental briefs.

DISCUSSION

There are two steps in a patent infringement analysis. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir. 1998) ("An infringement analysis involves two steps"). First, the meaning and scope of the patent claims alleged to be infringed must be determined. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 384, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). This step is commonly referred to as "claim construction." Second, the accused device must be compared to the properly construed clams to determine whether the device infringes the patent. See Cybor, 138 F.3d at 1454. The sole task now before me is the construction of the disputed claims of the '015 and the '167 patents. See Markman, 517 U.S. at 372, 116 S.Ct. 1384 ("We hold that the construction of a patent, including terms of art within its claims, is exclusively within the province of the court").

The Supreme Court has emphasized that the purpose of patent claims is to apprise the public of what is protected by a particular patent. See Markman, 517 U.S. at 373, 116 S.Ct. 1384 ("It has long been understood that a patent must describe the exact scope of an invention and its manufacture to `secure to [the patentee] all to which he is entitled, [and] to apprise the public of what is still open to them'") (quoting McClain v. Ortmayer, 141 U.S. 419, 424, 12 S.Ct. 76, 35 L.Ed. 800 (1891)). See also Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed.Cir.1989) ("A claim in a patent provides the metes and bounds of the right which the patent confers on the patentee to exclude others from making, using, or selling the protected invention"). While the construction of the claims a of patent is closely akin to construing other written documents, such as contracts or statutes, special considerations apply to patent claim construction, based upon the need for the public, and other inventors, to know as precisely as possible the scope of a patentee's claimed invention. Therefore, the court must look first look to matters in the public record when construing claims of a patent. See Burke, Inc. v. Bruno Independent Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.Cir.1999) ("This court has held that the language of the claims, the specification and the prosecution history are principally involved in construing patent claims because these constitute the public record") (citing Markman, 52 F.3d at 976). In general, a court first looks to the language of the claim, the written description portion of the specification, including any relevant drawings, and the prosecution history. See Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 1414 (Fed.Cir.2000). In order to aid the court's understanding of the patent, extrinsic evidence may be consulted if needed. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.1996). However, "[t]he court turns to extrinsic evidence only when the intrinsic evidence is insufficient to establish the clear meaning of the asserted claim." Zodiac Pool, 206 F.3d at 1414. Allowing the public record to be altered or changed by extrinsic evidence introduced at trial, such as expert testimony, would make the right of the public to be on notice of the patent's limitations meaningless. See Vitronics, 90 F.3d at 1583.

The words of the claims themselves, used to define the scope of the patented invention, are the starting point of claim construction. See Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed.Cir. 1995) ("[R]esort must be had in the first instance to the words of the claim") (quoting Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed.Cir.1984)). "[A] court must presume that the terms in the claim mean what they say, and, unless otherwise compelled, give full effect to the ordinary and accustomed meaning of claim terms." Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed.Cir. 1999). Indeed, plain English words are entitled to their plain English meaning, see In re Wright, 866 F.2d 422, 425 (Fed.Cir. 1989), unless it is apparent form the patent specifications and prosecution history that the inventor used a term with a different meaning. See Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir.1996). In short, while terms used in a patent generally should be construed to have the ordinary meaning they had at the time of the patent application, a patentee is still entitled to "choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history." Vitronics, 90 F.3d at 1582 (citing Hoechst Celanese, 78 F.3d at 1578). In those circumstances where the patentee's meaning is clear, the court must adopt the special definition of the term.

Thus, second, it is always necessary to read the patent claims "in view of the specification, of which they are a part." Markman, 52 F.3d at 979. The specification is "highly relevant to the claim construction analysis," Vitronics, 90 F.3d at 1582, because it contains "a written description of the invention ... in such full, clear, concise, and exact terms as to enable any person skilled in the art ... to make and use [the invention]." 35 U.S.C. § 112, ¶ 1. Therefore, the court should consider carefully the written description portion of the patent specification to discern any special meaning that the patentee gave to any terms found in the patent's claim. The specification operates "as a sort of dictionary, which explains the invention and may define terms used in the claims." Markman, 52 F.3d at 979. However, the specification "does not delimit the right to exclude. That is the function and purpose of claims." Id. at 980.

An exception to the general rules regarding specifications applies when an element in a claim employs means-plus-function language. Means-plus-function elements are defined by 35 U.S.C. § 112, ¶ 6. That section provides:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

35 U.S.C. § 112, ¶ 6.

In effect, § 112, ¶ 6 allows a patentee to state claims in broad, general language by stating the "function" of the invention, rather than reciting the detailed structures or materials that perform the claimed function. Means-plus-function clauses, being devoid of the details of structure capable of satisfying the recitation of function, are the broadest or most generalized recitation of that structure. As such, means-plus-function language is an economical way of expressing the more complex structures covered by the claim.

While a...