Fisher-Rosemount Sys. v. ABB Ltd.
| Decision Date | 12 December 2019 |
| Docket Number | CIVIL ACTION NO. 4:18-CV-00178 |
| Parties | FISHER-ROSEMOUNT SYSTEMS, INC. and EMERSON PROCESS MANAGEMENT LLLP, Plaintiffs, v. ABB LTD, ABB, INC., ABB AB, and ABB AUTOMATION GMBH, Defendants. |
| Court | U.S. District Court — Southern District of Texas |
Before the Court are the claim construction briefs filed by both parties in this patent infringement suit. On November 6, 2019, the Court held a hearing, in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), during which the parties presented argument in support of their proposed constructions. After considering the arguments of counsel, the evidence, and the applicable law, the Court finds that the disputed claims of the patents-in-suit should be construed as set forth herein.
Plaintiff Fisher-Rosemount Systems, Inc. is the owner of U.S. Patent No. 8,332,567 (the "'567 patent"); U.S. Patent No. 9,411,7691 (the "'769 patent"); and U.S. Patent No. 7,684,875 (the "'875 patent"). Fisher-Rosemount Systems, Inc. and Emerson Process Management LLLP(collectively, "Plaintiffs") brought suit against Defendants ABB, Inc. et al. (the "Defendant") for infringement of these patents.
The patents at issue relate generally to process control systems. These systems, which are used in a variety of industries such as chemical, pharmaceutical, and wastewater treatment, oversee devices performing a process that creates or changes something by performing that process; for instance, in oil refining, process control systems oversee the machinery and devices that transform crude oil into gasoline. (Doc. No. 137 at 2). A process control system is generally comprised of three groups of electronic devices: controllers, input/output ("I/O") devices, and field devices. Field devices (e.g., valves or sensors) send information about process activities to controllers through the I/O system, and the controller in turn sends information to other field devices to make adjustments to process activities.
The '567 and '769 patents relate to an apparatus and methods for electronically—rather than physically through wires—marshalling signals from field devices to a process controller within the process control system. This electronic marshalling is accomplished through termination modules, which are removably coupled to a base and housed in a marshalling cabinet. There is a one-to-one correspondence between the number of termination modules and field devices. The '875 patent builds on these patents and explains an electronic marshalling process that automatically configures these connections between controllers and field devices using "device tags."
The '567 patent contains 25 claims, the '769 patent contains 19 claims, and the '875 patent contains 23 claims. Because the disputed terms and phrases occur throughout these claims, the Court will not reproduce each claim containing a disputed term.
In patent law, "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) (citation omitted). Claim construction is a matter of law, and thus the task of determining the proper construction of the disputed terms lies with the Court. Markman, 417 U.S. at 385.
To determine the meaning of claims, courts begin by considering the intrinsic evidence, which includes the claims themselves, the specifications, and the prosecution history. Phillips, 415 F.3d at 1313. Courts look first to the language of the asserted claim itself. Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). It is well established that words of a claim "are generally given their ordinary and customary meaning," which is defined as the "meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips, 415 F.3d at 1312-13 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). A district court is not obligated to construe terms with ordinary meanings, lest trial courts be inundated with requests to parse the meaning of every word in the asserted claims. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008); see also Mentor H/S, Inc. v. Med. Device All., Inc., 244 F.3d 1365, 1380 (Fed. Cir. 2001) (). The exceptions to the ordinary meaning rule are (1) when the patent applicant acts as his own lexicographer and explicitly defines the term, and (2) when the specification "reveal[s] an intentional disclaimer, or disavowal, of claim scope by the inventor." Phillips, 415 F.3d at 1315-16.
Claims, however, "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, which describes and illustrates the invention in detail, Id. (quoting Vitronics, 90 F.3d at 1582).
Courts may also consider the prosecution history, which provides evidence of how the Patent and Trademark Office (the "PTO") and the inventor understood the patent. Phillips, 415 F.3d at 1317. However, "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 and thus is less useful for claim construction purposes." Phillips, 415 F.3d at 1317. Still, a "patentee may limit 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); see Cordis Corp. v. Bos. Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009). A patentee could do so by, for instance, clearly characterizing the invention in a way to avoid prior art. See, e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004) (). However, "[w]here an applicant's statements are amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable." 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
In most circumstances, analysis of the intrinsic evidence alone will resolve claim construction disputes. Vitronics, 90 F.3d at 1583. However, if the intrinsic evidence does not resolve ambiguities, a court may also consider extrinsic evidence such as expert witness testimony,dictionary definitions, and legal treatises. Id. While extrinsic evidence "can shed useful light on the relevant art," it is "less significant than the intrinsic record in determining 'the legally operative meaning of claim language.'" C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004).
A patent is presumed to be valid. 35 U.S.C. § 282. A claim is invalid for indefiniteness if it "fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2010). The party challenging the validity of a claim must prove indefiniteness by clear and convincing evidence. Takeda Pharm. Co. v. Zydus Pharms. USA, Inc., 743 F.3d 1359, 1366 (Fed. Cir. 2014); Apotex USA, Inc. v. Merck & Co., 254 F.3d 1031, 1036 (Fed. Cir. 2001); WesternGeco LLC v. ION Geophysical Corp., 876 F. Supp. 2d 857, 871 (S.D. Tex. 2012).
A claim may also be deemed invalid for indefiniteness if it is deemed to be a means-plus-function claim that insufficiently connotes structure under 35 U.S.C. § 112(f). This Section provides that "[a]n 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(f). Such "means-plus-function" claims allow a patentee to describe an element of the invention by the function it serves, rather than describing the item or element to be used—that is, what it does rather than what it is. Warner-Jenkins Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 (1997).
If a court determines that the means-plus-function analysis under § 112(f) governs, thecourt applies a two-step process: it must decide what the claimed function is, and then determine whether a structure corresponding to that function is disclosed in the specification. Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1097 (Fed. Cir. 2008). If the patent does not contain an adequate disclosure of the structure that corresponds to the claim elements, the patentee will have "failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112." Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009). Such a failure results in invalidity for indefiniteness. WesternGeco, 876 F. Supp. 2d at 867.
In determining whether a claim is drafted in means-plus-function format, and thus whether § 112(f) applies, courts have focused on the patent's use of the word "means." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). If the claim does not contain the word "means," courts apply a "rebuttable presumption that the term conveys sufficiently definite structure and is not subject to 112[(f)]." MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1341...
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