Miller Indus. Towing Equip. v. NRC Indus.

• Decision Date: 13 April 2023
• Docket Number: Civ. 1:21-cv-08158-NLH-AMD
• Parties: MILLER INDUSTRIES TOWING EQUIPMENT, INC., Plaintiff, v. NRC INDUSTRIES, Defendant.
• Court: U.S. District Court — District of New Jersey

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MILLER INDUSTRIES TOWING EQUIPMENT, INC., Plaintiff,
v.
NRC INDUSTRIES, Defendant.

Civ. No. 1:21-cv-08158-NLH-AMD

United States District Court, D. New Jersey

April 13, 2023

KATELYN O'REILLY, ESQ. LIZA M. WALSH, ESQ. WILLIAM T. WALSH, JR., ESQ. WALSH PIZZI O'REILLY FALANGA LLP THREE GATEWAY CENTER On behalf of Plaintiff.

GREGORY D. MILLER, ESQ. GENE Y. KANG, ESQ. RIVKIN RADLER LLP On behalf of Defendant.

OPINION

NOEL L. HILLMAN, U.S.D.J.

Before the Court is a dispute over the construction of claims relating to U.S. Patent No. 9,440,577 (the “' 577

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Patent”). This Opinion formally memorializes the Court's findings as to its construction of the patent claims at issue pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).

I. BACKGROUND

A. The '577 Patent

Plaintiff, Miller Industries Towing Equipment, Inc. (“Miller”) is the owner of the '577 Patent. (ECF 1-5 at 2). The '577 Patent is entitled Vehicle Wrecker With Improved Controls. (Id.) The '577 Patent relates to large tow trucks or “wreckers.” (ECF 80 at 1). The '577 Patent includes twenty-two claims, comprising four independent and eighteen dependent claims. (ECF 1-5 at 12-14).

The Patent includes six drawing sheets. (ECF 1-5 at 2-8). Figure 1 depicts prior art. (Id. at 3). Figures 2, 3, and 4 all depict one embodiment. (Id. at 4-5, 7). More specifically, Figure 3 “is an enlarged top and side perspective view of the side tool box and wrecker controls.” (Id. at 5, 10). Figure 3A depicts a second embodiment, with a similar view as the Figure 3 drawing. (Id. at 6, 10). Finally, Figure 5 depicts “a top, schematic view of a preferred embodiment.” (Id. at 10). The patent's description of the embodiments describes Figure 3 and Figure 3A in relevant part as follows:

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Referring now to FIG. 3, outwardly-opening door 25 of wrecker side tool box 24 is shown. A console 30 such as a console made of a composite material, may be rigidly mounted (such as adhesively mounted, or attached using fasteners) on door 25 as shown. Console 30 may support wrecker controls generally designated as 31

Referring to FIG. 3A, an alternative embodiment of side toolbox 24' is shown utilizing a shelf 25' supporting console 30 which slides in and out of toolbox 24', and an upper door 27' which can close the toolbox from the top.

A key distinction between the two embodiments is that Figure 3 includes an “outwardly-opening door” with a mounted console and wrecker controls, whereas Figure 3A includes a shelf upon which the console is supported.

B. Procedural History

On April 5, 2021, Plaintiff filed its Complaint against defendant, NRC Industries (“NRC” or “Defendant”) for patent infringement. (ECF 1). Miller asserts that that certain of NRC's wrecker models infringe claims 1-3, 6, 11, 16, and 20-21 of the '577 Patent. (ECF 1 at ¶ 9). On February 4, 2022, NRC filed its Answer and Counterclaims. (ECF 42).

The Parties filed a Joint Claim Construction and Prehearing Statement on July 1, 2022, setting out the disputed terms as well as agreed upon terms. (ECF 80). On August 15, 2022, the Parties filed their respective Opening Briefs. (ECF 85, NRC

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Opening Brief; ECF 86, Miller Opening Brief). On September 16, 2022, the Parties filed their responses. (ECF 89, NRC Response; ECF 90, Miller Response). Following briefing, this Court held a claim construction hearing on March 8, 2023. (ECF 97).

II. LEGAL STANDARD

Claim construction is “an issue for the judge, not the jury.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996); see also Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 332 (2015) (“This ultimate interpretation is a legal conclusion.”). “[T]he words of a claim ‘are generally given their ordinary and customary meaning.'” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art [the “POSA”] in question at the time of the invention.” Id. at 1313. Claim construction begins with the intrinsic evidence of the patent--the claims, the specification, and the prosecution history--and may require consultation of extrinsic evidence to understand the state of the art during the relevant time period. Teva Pharms. USA, Inc., 574 U.S. at 331-32.

“Extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and

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inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980. However, “[i]n those cases where the public record unambiguously describes the scope of the patented invention, reliance on any extrinsic evidence is improper.” Vitronics Corp., 90 F.3d at 1583. “When an analysis of intrinsic evidence resolves any ambiguity in a disputed claim term, it is improper to rely on extrinsic evidence to contradict the meaning so ascertained.” Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1367 (Fed. Cir. 2003) (emphasis in original). “Extrinsic evidence . . . cannot be used to alter a claim construction dictated by a proper analysis of the intrinsic evidence.” On-Line Tech. v. Bodenseewerk Perkin-Elmer, 386 F.3d 1133, 1139 (Fed. Cir. 2004) (citations omitted).

As part of construing claims, the Court can assess whether a claim term is indefinite, and reach “‘a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims.'” In re Aoyama, 656 F.3d 1293, 1299 (Fed. Cir. 2011) (quoting Personalized Media Commc'ns, L.L.C. v. Int'l Trade Comm'n, 161 F.3d 696, 705 (Fed. Cir. 1998)). For a claim term to be definite under 35 U.S.C. § 112 (2012), “a patent's claims, viewed in the light of the specification and prosecution history, [must] inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 909 (2014).

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It is permissible to “read in” testing conditions from the specification without violating the basic canon of construction not to import limitations from the specification into the claims, but only where this will “reconcile[ ] the ambiguous claim language with the inventor's disclosure.” Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1378-79 (Fed. Cir. 2005). Where, however, the specification discloses multiple methods for evaluating a claim limitation without guidance to a person of ordinary skill in the art about which method to use, the claim limitation is indefinite. Dow Chem. Co. v. Nova Chems. Corp. (Can.), 803 F.3d 620, 634-35 (Fed. Cir. 2015); Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1344-45 (Fed. Cir. 2015), on remand from 574 U.S. 318 (2015).

III. AGREED-UPON TERMS

The Parties initially agreed upon the construction of three terms, as set out in their Joint Claim Construction and Prehearing Statement. (ECF 80 at 2). The Parties later agreed upon what was previously Disputed Term 2. (ECF 84 at 1). The agreed upon terms have been construed by the Parties as follows.

Term	Agreed-Upon Construction
“the wrecker controls comprise integrated electrical and hydraulic controls located on a single console” (Claims 8, 14)	Plain and ordinary meaning in view of the claims, specification, and prosecution history.

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The plain and ordinary meaning means: The wrecker controls include both electrical and hydraulic controls located on the control panel.
A network of components that communicate using a vehicle bus standard application that allows microcontrollers and devices to communicate with each other within a vehicle.	“CAN bus” (Claims 5 and 14)
“CAN controller” (Claims 5 and 14)	A component associated with devices on the CAN bus (such as a sensor, actuator, or other control device) that controls the sending and receiving of messages on the CAN bus.
“supported by” (Claims 1, 14, and 16)	“directly or indirectly having its weight borne by”

IV. DISPUTED TERMS^[1]

The Court has considered the Parties' positions on their proposed construction of the disputed terms as presented in their comprehensive briefs and at oral argument at the Markman hearing. Accordingly, the Court construes the claim-terms as follows.

A. Disputed Term 1: “control panel”

Claim Term	Miller's Proposed Construction	NRC's Proposed Construction
“control panel” (Claims 1-3, 14, 16, 21)	“A platform on which wrecker controls are located and supported, and may also include a separate closing	“A unit on which controls for the wrecker are atta

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portion for closing off an interior compartment of the vehicle.”

In support of its construction, Miller asserts that the claim term “control panel,” as used in asserted claims 1-3, 14, 16, and 21, is broad enough to include both the embodiment in Figure 3 and in Figure 3A of the patent. (ECF 86 at 16). It explains that only Miller's proposed construction covers both embodiments. (Id.).

In the Figure 3 “a side compartment 24 has an outwardly opening door 25 that both closes off the compartment and carries the wrecker controls 30.” (ECF 86 at 16-17 (emphasis in original)). On the other hand, in Figure 3A “an upper door 27' is used to close off the compartment, while a separate sliding shelf 25' - unattached to the door - carries the wrecker controls 30.” (Id. at 17 (emphasis in original)). This “upper door” comes down like a garage door, to fully close off access to the wrecker controls and the compartment they are stored in. (ECF 99 at 31:17-19). The crux of Miller's argument is that this separate door in Figure 3A must be part of the “control panel” in this embodiment. (ECF 86 at 18)...