Scarborough v. Integricert, LLC.
| Decision Date | 31 August 2015 |
| Docket Number | CIVIL NO. 6:12-0396 |
| Court | U.S. District Court — Western District of Louisiana |
| Parties | RANDALL SCARBOROUGH v. INTEGRICERT, LLC. |
This patent case is before the Court for construction of the ten disputed claim terms in United States Patent Nos. 6,848,322 ("the 322 Patent") and 7,284,447 ("the 447 Patent"), that is, the terms "pad eye", "non-destructive(ly)", "attachment means", "attachment structure", "control means" "control manifold", "fluid attachment means (or apparatus)", "lifting lug", "testing the integrity of the welding (or weld)" and "about said at least one desired test piece."1 Plaintiff, Randall Scarborough ("Scarborough") accuses the Defendant, Integricert, LLC ("Integricert"") of infringing several claims of the 322 and 447 Patents.
The Court conducted a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 390, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) ("the Markman hearing") on August 27, 2013.2 Thereafter, re-examination of five claims of the 447 Patent and all claims of the 322Patent was granted. Accordingly, the action was stayed. [rec. doc. 103].
The stay was lifted on February 5, 2015 after the PTO issued certificates of re-examination. [rec. doc. 109]. Upon re-examination, all claims of the 322 Patent (1-21) were determined to be patentable as amended; four claims of the 447 Patent were determined to be patentable as amended and one claim (29) was canceled.3 Accordingly, the parties were permitted to file Supplemental Claim Construction Briefs on or before May 4, 2015. [rec. doc. 131].
Upon review and consideration of the evidence before the Court, the claim construction, post-Markman hearing and post-re-examination supplemental briefs filed by the parties4, the arguments presented by counsel at the Markman hearing, and the controlling legal authority, the Court issues this Ruling on Claim Construction.
Scarborough is the inventor and owner of both the 322 and 447 Patents, originally issued on February 1, 2005 and October 23, 2007, respectively, and titled "Apparatus andMethod for Testing Weld Integrity".5 The 447 Patent is a continuation-in-part of the 322 Patent. Accordingly, the specification for the 447 Patent was "borrowed" from the 322 Patent and, unless specifically noted, contains the same, or substantially the same, language.
Both Patents in suit relate to apparatuses and methods for testing the integrity of welds used to attach lifting points, such as pad eyes, lifting lugs or other lifting devices, to structures intended to be lifted. Typically, these structures are large cargo or shipping containers and oilfield or offshore drilling equipment. The apparatuses are portable, self-contained, easily transportable and the method of testing is non-destructive. Both employ one or more hydraulic cylinders to apply a non-destructive test force to the pad eye or lifting lug welded to the structure to be lifted which mimics the forces on the attachment weld that occur during lifting. After application of the test force, the pad eye and welding are examined for defects and deformities.
The 322 Patent contains twenty-one claims. Claims 1, 13, 20, and 21 are independent claims and the remaining seventeen claims are dependent claims. The 447 Patent, as originally issued, contained 31 claims and, after reexamination and reissuance, contains 30 claims, claim 29 having been canceled. Claims 1, 14, 27 and 30 are independent claims and the remaining claims are dependent claims.
A patent describes "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.'" Markman v. Westview Instruments, Inc., 517 U.S. 370, 373, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (citation omitted). Indeed, "it is only fair (and statutorily required) that competitors be able to ascertain to a reasonable degree the scope of the patentee's right to exclude." Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (5th Cir. 1995) ( en banc ), aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996). The claims of a patent define the patented invention to which the patentee is entitled the right to exclude. Markman, 517 U.S. at 373-374; Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) ( en banc) (citations omitted).
"Victory in any infringement suit requires a finding that the patent claim[s] 'cover[] the alleged infringer's product . . .' which in turn necessitates a determination of 'what the word[s] in the claim[s] mean.'" Markman, 517 U.S. at 374 (citation omitted). The meaning and scope of any disputed terms and limiting expressions in the claims are determined by the court as a matter of law. Vivid Technologies, Inc. v. American Science & Engineering, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) citing Markman, 52 F.3d at 976 and EMI Group North America, Inc. v. Intel Corp., 157 F.3d 887, 891 (Fed. Cir. 1998); Markman, 517 U.S. at 389-390. "[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy." Vivid Technologies, Inc., 200 F.3d at 803 citing U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) ().
"The words of a claim 'are generally given their ordinary and customary meaning.'" Phillips, 415 F.3d at 1312 quoting Vitronics, 90 F.3d at 1582. "The 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 in question at the time of the invention, that is, as of the effective filing date of the patent application." Phillips, 415 F.3d. at 1313. This "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 . . . . " Id.
For certain claim terms, "the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314 citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001).
For other claim terms, however, the meaning of the claim language may be less apparent. To construe those terms, the court considers "'those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean . . . [including] the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.'" Id. quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004).
"[T]here is no magic formula or catechism for conducting claim construction"; the court is not barred from considering any particular source, nor is the court required to analyze sources in any specific sequence. Phillips, 415 F.3d at 1324 (citations omitted). However, the court must assign the appropriate weight to each source consulted. Id.
Intrinsic evidence of record consists of "the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Vitronics Corp., 90 F.3d at 1582 citing Markman, 52 F.3d at 979. The Federal Circuit has repeatedly emphasized the primary importance of intrinsic evidence in claim construction, deeming intrinsic evidence "the most significant source of the legally operative meaning of disputed claim language." Vitronics Corp., 90 F.3d at 1582; Phillips, 415 F.3d at 1317.
Extrinsic evidence "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Phillips, 415 F.3d at 1317 citing Markman, 52 F.3d at 980. "Extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean . . . ." Id. at 1319.
Accordingly, extrinsic evidence may be admitted and used by the Court in claim construction. Id. However, such evidence is "less significant than the intrinsic record in determining the legally operative meaning of claim language." Id. at 1317 (internal quotations and citation omitted). This is so because, in general, extrinsic evidence is less reliable thanintrinsic evidence in determining how to read claim terms.6 Id. at 1318-1319.
Moreover, intrinsic evidence constitutes "the public record of the patentee's claim, a record on which the public is entitled to rely" in ascertaining the scope of the patentee's claimed invention to design around it. Vitronics Corp., 90 F.3d at 1583. Allowing the public record to be altered or changed by extrinsic evidence would make this right meaningless. Id.
Within the class of intrinsic evidence, the claims themselves provide substantial guidance as to the meaning of particular claim terms. Phillips, 415 F.3d at 1314 citing Vitronics, 90 F.3d at 1582 and ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) ().
In the absence of modifiers, general descriptive terms are typically construed as having their full meaning. Innova/Pure Water, Inc., 381 F.3d at 1118. The context in which a term is used in the asserted claim can be highly instructive. Phillips, 415 F.3d at 1314. Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. Id. citing Vitronics, 90 F.3d at 1582. Because...
To continue reading
Request your trial