Utica Enterprises v. Federal Broach and Machine, CIV. 01-74655.
| Decision Date | 15 April 2003 |
| Docket Number | No. CIV. 01-74655.,CIV. 01-74655. |
| Citation | 258 F.Supp.2d 706 |
| Parties | UTICA ENTERPRISES, INC., Plaintiff, v. FEDERAL BROACH AND MACHINE COMPANY, Defendant. |
| Court | U.S. District Court — Eastern District of Michigan |
Remy J. VanOphem, VanOphem & VanOphem, Troy, MI, David W. Wicklund, Shumaker, Loop & Kendrie, Toledo, OH, for plaintiff.
John K. McCulloch, Reising, Ethington, Barnes, Learman & McCulloch, PC, Saginaw, MI, Richard W. Hoffman, Worn, Burgess & Hoffman, PC, Auburn Hills, MI, for defendant.
Plaintiff, Utica Enterprises, Inc. ("Utica"), has alleged that Defendant, Federal Broach and Machine Company ("Federal Broach"), infringed claims 1, 3, 6 and 7 of Plaintiffs Patent No. 6,256,857 B1 ("'857 Patent"). The '857 Patent covers a method to retain a broach-cutting tool in a tool holder. "Broaching" involves a unique metal removing process to make precise and refined cuts to various machined parts.
Before the Court is the parties' request for claim construction of the '857 Patent as is required pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995), aff'd., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Claim construction is a matter of law, exclusively within the Court's province, while infringement is an issue of fact. Id. Having held a hearing on January 15, 2003 wherein the Court received the testimony of both parties' expert witnesses, and having received supplemental posthearing briefs, the Court's determination of the '857 Patent's disputed claim terms follows.
For the purposes of claim construction, the Court should rely primarily on evidence intrinsic to the patent, that being the patent claims, specifications and prosecution history. Teleflex, Inc. v. Ficosa North Am. Corp., 299 F.3d 1313, 1324-25 (Fed.Cir.2002)(citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996))( that such evidence is "the most significant source of the legally operative meaning of the disputed claim language"). To determine the meaning of the claim terms, the Court must begin with the words of the claims themselves. Id. Unless the specifications or prosecution history indicate otherwise, claim terms should be given the ordinary meaning that a person of ordinary skill in the art would ascribe to them. Id.; Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204-05 (Fed.Cir.2002); CCS Fitness, Inc. v. Brunswick, Corp., 288 F.3d 1359, 1366 (Fed.Cir.2001); see also, Amerikam, Inc. v. Home Depot, Inc., 99 F.Supp.2d 810, 812 (W.D.Mich.2000).
The claims also must be construed within the context of the specifications to determine whether it appears that the inventor intended to impart novel meanings to the claim terms by deviating from the ordinary definitions. Teleflex, 299 F.3d at 1324. If the claim language is unclear on its face, then the Court may consider the specifications and the prosecution history to resolve the lack of clarity. Id.; Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir.2001). With one exception, the specifications may not further limit the claims beyond the limitations contained in the claims themselves. Teleflex, 299 F.3d at 1326 (). When the claim describe a method in terms of the function that the method must serve, then, by statute, the claim construction will be limited to cover the structures, materials, or actions contained in the specifications and their equivalents. 35 U.S.C. § 112, ¶ 6 (hereinafter § 112, ¶ 6). In addition, the Court must not determine the claims to be broader than what the inventor represented to the Patent and Trademark Office ("PTO") during the patent application process. Teleflex, 299 F.3d at 1326 (citation omitted) ("[P]rosecution history limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance"); see also, Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1368 (Fed.Cir.2001) (citations omitted).
The Court may rely on extrinsic evidence including dictionaries, treatises and expert testimony to assist with comprehending the underlying subject matter as it is understood by those of ordinary skill in the particular trade, and to assist with claim construction, when necessary, so long as the extrinsic evidence does not contradict the claim language. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed.Cir.2003); Markman, 52 F.3d at 981. This memorandum constitutes the Court's findings of law on claim construction for the '857 Patent.
Defendant asserts that all of the terms needing construction can be found in Claim 1. Plaintiff asserts that those terms have a different scope in Claim 3, and, therefore, that the Court should construe Claim 3 as well. For the reasons explained more fully in Part III.B., infra, the Court only will construe the disputed terms contained in Claim 1. Claim 1 reads, in part:
A method of retaining a broach cutting tool member in a broach tool holder, said broach tool holder comprising: a top surface, an oppositely disposed bottom surface, and an intermediate surface interposed said top and bottom surfaces, said broach tool holder further comprising a first planar abutment surface extending from said top surface and spaced a predetermined distance from said first planar abutment surface, said first planar abutment surface and said second planar abutment surface forming a dihedral right angle, said first and second planar abutment surfaces further forming a right angle with said top surface;
said broach cutting tool member comprising a bottom end surface, a top end surface opposite said bottom end surface, a peripheral outer surface interposed said top end surface and said bottom end surface, said peripheral outer surface having two planar abutment surfaces disposed along said peripheral outer surface and extending perpendicularly to said top end surface and said bottom end surface of said broach cutting tool member, said two planar abutment surfaces adapted to be complementary, respectively, to said first planar and second planar abutment surfaces, disposed on said broach tool holder, said peripheral outer surface of said broach cutting tool member further having a third planar abutment surface disposed along said peripheral outer surface, said third planar abutment surface having at least a portion extending obliquely with respect to one of said top end surface and said bottom end surface of said broach cutting tool member ... '857 Patent, Col. 7, ll. 26-56.
Both parties request that the Court 1) determine whether or not the tool holder assembly cited in Claim 1 must be a unitary structure, 2) determine and/or clarify the meaning of "predetermined accurate work position," and 3) determine whether Claim 1 contemplates that the locking step would require a single device, and if so, whether that device is limited to a wedgelike object. Defendant further requests that the Court construe the terms "top surface," "planar abutment surfaces," and "contiguous."1
Utica maintains that neither the specification nor the prosecution history expresses its intent to limit Claim 1 to the preferred embodiments which describe the tool holder as a unitary structure machined from a single piece of metal. To support its contention that the tool holder is a one-piece, unitary structure, Federal Broach relies on Figures 1 and 2 of the '857 Patent as well as on the deposition testimony of Robert Roseliep ("Roseliep"), the inventor, that the planar surface on the tool holder must be an integral part of the tool holder itself. See Def.'s Markman Br., App. D, Roseliep Dep. p. 41, ll. 23-25; p. 42, ll. 1-14. The Court's construction must begin with the claim's language. Teleflex, 299 F.3d at 1324-25. To that end, the Court will begin by construing the terms "top surface" and "planar abutment surface" as these terms are included in Claim 1's description of the tool holder body.
Claim 1 indicates that the tool holder is comprised of a top surface that is directly opposite a bottom surface with an intermediate surface between the two.
'857 Patent, Col. 7, ll. 28-30. Claim 1 further advises that two planar abutment surfaces extend from the top surface, forming a dihedral right angle to each other, and also forming a right angle with the top surface. '857 Patent, Col. 7, ll. 31-38. Since the parties did not offer any definitions for the term "top surface" or "planar abutment surface," that are particular to the broaching trade, the Court assumes that persons of ordinary skill in the art would ascribe to these terms the same meanings that a lay person would ascribe. The Court thus relies on dictionary definitions that are consistent with the intrinsic evidence of the '857 Patent to construe these terms. See Altiris, 318 F.3d at 1369.
"Top" means the "highest point, level, or part of something." Webster's Third International Dictionary (1976) (hereinafter Webster's). Accordingly, the Court construes the term "top surface" to mean the highest part of the tool holder, above which nothing else extends.
The term "plane" connotes a "surface such that the straight line that joins any two of its points lies wholly in that surface; a surface any intersection of which by a like surface is a straight line," or a "flat, level surface." Id. To "abut" is simply "to touch." Id. The "planar abutment surfaces," then are flat, straight surfaces which are designed to come into contact with the mirror-image, corresponding surfaces of the cutting tool. Given the Court's above-mentioned construction of the term...
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