Vertical Tank, Inc. v. BakerCorp

• Decision Date: 22 May 2019
• Docket Number: Case No. 1:18-CV-00145-LJO-JLT
• Parties: VERTICAL TANK, INC., a California Corporation, Plaintiff, v. BAKERCORP, a Delaware corporation, and UNITED RENTALS (NORTH AMERICA), INC., a Delaware Corporation, Defendants.
• Court: U.S. District Court — Eastern District of California

VERTICAL TANK, INC., a California Corporation, Plaintiff, v. BAKERCORP, a Delaware corporation, and UNITED RENTALS (NORTH AMERICA),INC., a Delaware Corporation, Defendants.

Case No. 1:18-CV-00145-LJO-JLT

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF CALIFORNIA

May 22, 2019

CLAIM CONSTRUCTION ORDER

(ECF No. 22)

I. BACKGROUND

Vertical Tank, Inc. ("VTI") brings this patent infringement action against BakerCorp and United Rentals (North America), Inc. (collectively, "Baker"), alleging infringement of three patents: A single utility patent, United States Patent No. 9,777,543 ("the '543 Patent"); and two design patents, United Sates Patent Nos. D716,842 ("the '842 Patent") and D716,843 ("the '843 Patent"). ECF No. 25, First Amended Complaint ("FAC"). The '543 Patent is "directed to one or more vertical cone bottom tanks having a lower manifold and an upper manifold that facilitate the creation of tank arrays in an oil or gas field in which the tanks are connected together through the lower and/or upper manifolds." Id. at ¶ 13. The '842 and '843 Patents are directed to the selection and arrangement of the component parts making up the lower manifold and upper manifold, respectively. Id. at ¶¶ 14-15.

This matter is before the Court on the parties' competing briefs regarding claim construction of three terms in the utility patent and three aspects of the design patents. (ECF No. 22, Joint Claim Construction Statement.) VTI filed an opening claim construction brief on November 30, 2018 (ECF No. 27), Baker responded on December 14, 2018 (ECF No. 28), and VTI replied on December 21, 2018 (ECF No. 30). On February 7, 2019, by stipulation of the parties and with leave of the Court, Baker filed a supplemental responsive brief. ECF No. 34. After considering the parties' briefs and all other relevant documents the Court finds a claim construction hearing unnecessary at this time, see Ballard Med. Prod. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir. 2001) ("District courts have wide latitude in how they conduct the proceedings before them, and there is nothing unique about claim construction that requires the court to proceed according to any particular protocol. As long as the trial court construes the claims to the extent necessary to determine whether the accused device infringes, the court may approach the task in any way that it deems best."), and construes the disputed claims as set forth below.

II. LEGAL BACKGROUND

A. Key Patent Concepts

A patent must "describe 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." See Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996). A patent application must contain a "specification" and at least one drawing. 35 U.S.C. § 111. There are two distinct parts of a patent specification. The first is a detailed "written description of the invention and of the manner and process of making and using it," set forth "in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same." 35 U.S.C. § 112(a). The written description also "shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention." Id. Second, a patent "specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which theapplicant regards as his invention." 35 U.S.C. § 112(b). The claims define the scope of a patent grant, Markman, 517 U.S. at 372, but "do not set forth the invention in all of the detail required by the written description." Lava Trading, Inc. v. Sonic Trading Mgmt., LLC, No. 03 CIV. 842 (TPG), 2004 WL 1145833, at *3 (S.D.N.Y. May 20, 2004).

Consistent with the "best mode" requirement of 35 U.S.C. § 112, patents disclose "embodiments" and "preferred embodiments" of the claimed invention, the purposes of which are "to provide a disclosure to the public of [the inventor's] best mode of carrying out the invention when the applications were filed." Constr. Tech., Inc. v. Cybermation, Inc., 965 F. Supp. 416, 431 (S.D.N.Y. 1997). Such a disclosure is included for the benefit of the public, rather than to limit the scope of the invention. Id.; see also Martin v. Barber, 755 F.2d 1564, 1567 (Fed. Cir. 1985) (explaining that "[i]nfringement, either literal or by equivalence, is determined by comparing the accused device with the claims in suit, not with a preferred or commercial embodiment of the patentee's claimed invention.").

B. Utility Patent Claim Construction

Claim construction is a matter of law, reserved entirely for the Court. See Markman, 517 U.S. at 372; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Terms contained in claims are "generally given their ordinary and customary meaning." Vitronics, 90 F.3d at 1582. In determining the proper construction of a claim, a court begins with the intrinsic evidence of record, consisting of the claim language, the patent specification, and, if in evidence, the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313-14 (Fed. Cir. 2005); see also Vitronics, 90 F.3d at 1582. "A claim term used in multiple claims should be construed consistently . . . ." Inverness Med. Switzerland GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1371 (Fed. Cir. 2002).

"The appropriate starting point . . . is always with the language of the asserted claim itself." Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). "[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 in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips, 415 F.3d at 1313. "There are only two exceptionsto this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution." Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).

"Importantly, 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 specification." Phillips, 415 F.3d at 1313. "Claims speak to those skilled in the art," but "[w]hen the meaning of words in a claim is in dispute, the specification and prosecution history can provide relevant information about the scope and meaning of the claim." Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (citations omitted). "[T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. "However, claims are not to be interpreted by adding limitations appearing only in the specification." Electro Med., 34 F.3d at 1054. "Thus, although the specifications may well indicate that certain embodiments are preferred, particular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments." Id. Conversely, "where [ ] the claim language is unambiguous, [the Federal Circuit has] construed the claims to exclude all disclosed embodiments." Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1215-16 (Fed. Cir. 2008). "[T]he description may act as a sort of dictionary, which explains the invention and may define terms used in the claims," and the "patentee is free to be his own lexicographer," but "any special definition given to a word must be clearly defined in the specification." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-80 (Fed. Cir. 1995).

On the other hand, it is a fundamental rule that "claims must be construed so as to be consistent with the specification, of which they are a part." Merck & Co. v. Teva Pharm. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003); Phillips, 415 F.3d at 1316. "The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Renishaw PLC v. Marposs Societ' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).

Finally, the court may consider the prosecution history of the patent, if in evidence. Markman, 52 F.3d at 980. The prosecution history may "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; see also Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) ("The purpose of consulting the prosecution history in construing a claim is to exclude any interpretation that was disclaimed during prosecution.") (internal quotations omitted).

In most situations, analysis of this intrinsic evidence alone will resolve claim construction disputes. See Vitronics, 90 F.3d at 1583. However, "it is entirely appropriate . . . for a court to consult trustworthy extrinsic evidence to ensure that the claim construction it is tending to from the patent file is not inconsistent with clearly expressed, plainly apposite, and widely held understandings in the pertinent technical field." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999). Extrinsic evidence "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. All extrinsic evidence should be evaluated in light of the intrinsic evidence, Phillips, 415 F.3d at 1319, and courts should not rely on extrinsic evidence in claim construction...