Advanced Steel Recovery, LLC v. X-Body Equip., Inc.

• Decision Date: 19 July 2019
• Docket Number: No. 2:16-cv-00148-KJM-EFB,2:16-cv-00148-KJM-EFB
• Court: U.S. District Court — Eastern District of California
• Parties: ADVANCED STEEL RECOVERY, LLC, Plaintiff/Counter-defendant, v. X-BODY EQUIPMENT, INC., JEWELL ATTACHMENTS, LLC, J.D.M.L., INC. dba STANDARD INDUSTRIES, and ALLSTATE PAPER & METAL RECYCLING CO., INC., Defendants/Counterclaimants.

ADVANCED STEEL RECOVERY, LLC, Plaintiff/Counter-defendant,
v.
X-BODY EQUIPMENT, INC., JEWELL ATTACHMENTS, LLC,
J.D.M.L., INC. dba STANDARD INDUSTRIES, and
ALLSTATE PAPER & METAL RECYCLING CO., INC., Defendants/Counterclaimants.

No. 2:16-cv-00148-KJM-EFB

UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF CALIFORNIA

July 19, 2019

ORDER

Plaintiff Advanced Steel Recovery (ASR) sues defendants X-Body Equipment, Inc. and Jewell Attachments, LLC,¹ alleging defendants' "Acculoader" product infringes ASR's patent. On February 1, 2018, the court conducted a hearing in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). Mark Nielsen and C. Wood Pak appeared for ASR, and Robert Harkins appeared for defendants. Through this order, based on the entirety of the record before it, the court construes the disputed words and phrases found in claims 1, 4, 5 and 7 of the patent-in-suit, U.S. Patent No. 9,056,731 (the '731 Patent).

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I. BACKGROUND

A. First Amended Complaint

On August 23, 2016, ASR filed its First Amended Complaint, alleging defendants' "Acculoader" infringes plaintiff's '731 Patent. First Am. Compl. (FAC) ¶¶ 18, 24, ECF No. 44.

The '731 Patent, titled "Container Packer System and Method," was filed on November 22, 2011. '731 Patent, ECF No. 79-1, Ex. B. The '731 Patent is based on a continuation-in-part (CIP) application following U.S. Patent No. 8,061,950 (the '950 Patent), which itself was a CIP application of U.S. Patent No. 7,744,330 (the '330 Patent). Id. A "continuation-in-part" application is a new patent application filed by the original patent applicant, which repeats a substantial part of the earlier application, but adds to or subtracts from claims disclosed in a substantially similar earlier application. 35 U.S.C § 120; Phigenix, Inc. v. Genentech Inc., 238 F. Supp. 3d 1177, 1180 (N.D. Cal. 2017). The '950 Patent was filed on June 29, 2010. ECF No. 28-1, Ex. 2. The '330 Patent was filed on June 13, 2008. Id. Ex. 1.²

ASR alleges "claims 1, 4, 5, and 7 of the [']731 [P]atent . . . are entitled to an effective filing date of June 13, 2008, which is the filing date of the application for the '330 Patent." FAC ¶ 22. "Effective filing date" is a synonym for priority date, which can include the filing date of a substantially similar earlier application. 35 U.S.C. § 100 ("effective filing date" includes "the earliest application for which the patent or application is entitled"). ASR also alleges "disclosures in both the application for the '330 Patent and the application for the '950 Patent are sufficient to comply with the written description requirement with respect to all of the limitations contained in at least claims 1, 4, 5, and 7 of the '731 Patent." FAC ¶ 22. Under the written description requirement, the patent specification at issue "must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (internal citations and alterations omitted); see 35 U.S.C. § 112 ("The specification shall contain a written description of

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the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention."). Here, ASR alleges certain limitations in the earlier '950 and '330 Patents complied with the written description requirement applicable to the '731 Patent because they adequately disclosed several limitations carried over into the '731 Patent. FAC ¶ 22.

The First Amended Complaint alleges defendants began to infringe the '731 Patent by making and selling the Acculoader in or about August 2011, after the "effective filing date" of the '731 Patent, "which is June 13, 2008." Id. ¶ 25.

B. Procedural History

On September 12, 2017, the court issued an order denying defendants' motion to dismiss, defendants' motion for summary judgment, and defendants' motion for sanctions. ECF No. 73 at 1. As part of that order, the court identified an issue precluding summary judgment: "the proper construction of the claim term 'structural rails.'" Id. at 12. "Because there is a genuine dispute of material fact regarding the proper scope and meaning of the term 'structural rails,' a Markman³ hearing [was required] before a motion for summary judgment is ripe." Id. at 13.

ASR has submitted an opening brief on claim construction. Pl.'s Br., ECF No. 88. Defendants submitted their own claim construction brief, Defs.' Br., ECF No. 90, and ASR replied, Reply, ECF No. 92. ASR also submitted a notice of supplemental authority. Pl.'s Notice. Suppl. Auth., ECF No. 100, asserting the "authority may be helpful" to the court in deciding claim construction issues. Id. at 2. Defendants did not file a response to ASR's notice of supplemental authority.

The court now construes the disputed words and phrases found in claims 1, 4, 5 and 7 of the '731 Patent. The parties have submitted numerous evidentiary objections along with

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their briefs. See ECF No. 90-6, 92-2. The court addresses any evidentiary objections to evidence relied on below, as necessary to clarify the record. To the extent any declaration statements offer legal conclusions, the court disregards those statements.

II. LEGAL STANDARD

The court construes patent claims as a matter of law based on the relevant intrinsic and extrinsic evidence. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). "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." Id. at 1316 (internal quotation marks, citation omitted). Accordingly, a claim should be construed in a manner that "stays true to the claim language and most naturally aligns with the patent's description of the invention." Id.

In construing disputed terms, a court looks first to the claims themselves, for "[i]t 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.'" Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Generally, the words of a claim should be given their "ordinary and customary meaning," which is "the meaning that the term[s] would have to a person of ordinary skill in the art in question at the time of the invention." Id. at 1312-13. A "person of ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior art." Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). In some instances, the ordinary meaning to a person of skill in the art is clear, and claim construction may involve "little more than the application of the widely accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314.

In many cases, however, the meaning of a term to a person skilled in the art will not be readily apparent, and a court must look to other sources to determine the term's meaning. See id. Under these circumstances, a court should consider the context in which the term is used in an asserted claim or in related claims and bear in mind that "the 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, including the

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specification." Id. at 1313. The specification "is always highly relevant" and "[u]sually . . . dispositive; it is the single best guide to the meaning of a disputed term." Id. at 1315 (quotation omitted). Indeed, "the only meaning that matters in claim construction is the meaning in the context of the patent." Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016). Where the specification reveals that the patentee has given a special definition to a claim term that differs from the meaning it would ordinarily possess, "the inventor's lexicography governs." Phillips, 415 F.3d at 1316. Likewise, where the specification reveals an intentional disclaimer or disavowal of claim scope by the inventor, the inventor's intention as revealed through the specification is dispositive. Id. However, while the specification may describe a preferred embodiment, the claims are not necessarily limited only to that embodiment. Id. at 1323; see also Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1151 (Fed. Cir. 2003) ("The general rule, of course, is that claims of a patent are not limited to the preferred embodiment, unless by their own language.").

In addition to the specification, a court may also consider the patent's prosecution history, which consists of the complete record of proceedings before the U.S. Patent and Trademark Office ("PTO") and includes the cited prior art references. 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." Phillips, 415 F.3d at 1317.

A court is also authorized to consider extrinsic evidence in construing claims, such as "expert and inventor testimony, dictionaries, and learned treatises." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Expert

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testimony may be particularly useful in providing

background on the technology at issue, . . . explain[ing] how an invention works, . . . ensur[ing] that the court's understanding of the technical aspects of the patent is consistent

...