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July 2, 1996


The opinion of the court was delivered by: ASHMAN

 Plaintiffs, Pave Tech, Inc. and Stephen Jones (hereinafter collectively referred to as "Pave Tech"), seek judgment as a matter of law concerning the interpretation of certain patent claims which it contends have been infringed. In an Amended Complaint filed April 26, 1991, Pave Tech seeks injunctive and monetary relief resulting from Defendants', Snap Edge Corporation, Fred Strobl, Albert L. Litwin, Jack Glatt and Bradley LeGare (hereinafter collectively referred to as "Snap Edge"), alleged infringement of United States Reissue Patent No. 33,550 entitled, "Restraint Edge for Paving Members" ("'550 Reissue Patent"). *fn1" Pave Tech alleges that Snap Edge has infringed, induced others to infringe or contributed to the infringement of others in violation of 35 U.S.C. §§ 271 and 281. *fn2" Snap Edge contends that the '550 Reissue Patent is invalid and, in the alternative, that their product and actions do not infringe. Since a jury has been requested in this case, the sole issue in this motion is the construction of certain claims in the '550 Reissue Patent: Independent claim 115, with corresponding dependent claims 116, 117, 128, 130 and 139, and independent claim 144, with corresponding dependent claims 145, 146, 147, 150, 157, 158, 159, 164, 165 and 167.

 On August 2, 1995, this Court held a hearing to determine the proper construction of claims in this case pursuant to the holding in Markman, et al. v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd by 116 S. Ct. 1384 (1996) ("in a case tried to a jury, the court has the power and the obligation to construe as a matter of law the meaning of language used in the patent claim."). In briefs and at the hearing, the parties presented their interpretations of the claims based on their reading and analysis of the claim specifications, the prosecution history and extrinsic evidence. However, on September 29, 1995, this Court stayed its decision on this issue in light of the U.S. Supreme Court grant of certiorari in Markman. On April 23, 1996, the Supreme Court affirmed the decision in Markman, expressly holding that the construction of a patent's claims, including terms of art contained therein, is exclusively within the province of the court. Markman, et al. v. Westview Instruments, Inc., et al., 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996). Based on this holding, the Court now enters the following Report and Recommendation regarding construction of certain claims at issue in this infringement suit.

 I. Relevant Facts

 Pave Tech, Inc. ("Pave Tech") is a Minnesota corporation with principal place of business in Bloomington, Minnesota. Stephen Jones ("Jones") is President of Pave Tech and is the owner of the '550 Reissue Patent. Pave Tech is a licensee under the '550 Reissue Patent. Snap Edge Corporation ("Snap Edge") is an Illinois corporation with principal place of business in Chicago. Fred Strobl ("Strobl") is a director and President of Snap Edge; Jack Glatt ("Glatt") is a director and Secretary/Treasurer of Snap Edge; and Bradley LeGare ("LeGare") is a director and Vice President of Snap Edge.

 In 1989, Jones obtained Patent '307 for a plastic edge restraint for paving stones. During the patent application and examination process, Jones produced and sold his edge restraint throughout the United States and Canada. In December, 1989, Snap Edge was incorporated and began manufacturing plastic edge restraints. In January, 1990, Strobl met with Jones to obtain a license under Patent '307, but Jones did not grant any license to Snap Edge. Subsequently, Jones discovered Snap Edge promoting a plastic edge restraint at an industry trade show and Jones filed the instant infringement action.

 In April, 1990, Jones sought reissue of Patent '307 pursuant to 35 U.S.C. § 251. *fn3" Following the examination process, the PTO reissued the patent with several new claims as '550 Reissue Patent in March 1991. In its subsequently filed Amended Complaint, Pave Tech alleges infringement of '550 Reissue Patent.

 The '550 Reissue Patent contains 119 claims and 3 drawing sheets and provides for an edge restraint "for maintaining hard surfaces such as paving stones within a predetermined boundary." ('550 Reissue Patent, Col. 1, lns. 17-19). The Background section of the '550 Reissue Patent chronicles the history of existing patented edge restraints and the attendant problems with each: From masonry or concrete restraints which are costly and inflexible, to steel panel restraints which are inflexible and subject to corrosion, to aluminum panel restraints which are either weak and flexible or heavy and inflexible. ('550 Reissue Patent, Col. 1, lns. 35-70; Col. 2, lns. 1-35). The '550 Reissue Patent also notes that "none of these [patented restraints] address converting the horizontal force applied from the paving stones into a vertical force down into the ground." (Reissue Patent, Col. 2, lns. 43-45). Finally, the '550 Reissue Patent identifies a need for "a lightweight edge material which uses the ground around it to provide increased strength for preventing horizontal shifting of paving stones" ('550 Reissue Patent, Col. 3, lns. 30-33) and suggests that this invention satisfies that need.

 II. Discussion

 A. Standard of Law - Claim Construction

 A patent is a government grant of rights and its claims provide the metes and bounds of those rights which allow the patentee to exclude others from making, using, or selling the invention as claimed. 35 U.S.C. § 154; see also Corning Glass Works v. Sumitomo Elec. USA, Inc., 868 F.2d 1251 (Fed. Cir. 1989). There are two types of claims in a patent: Independent claims and dependent claims. An independent claim stands on its own and does not refer to any other claim in the patent; thus, it must be read separately from the other claims when determining its scope. A dependent claim includes a reference to at least one other claim in the patent and must be interpreted to encompass each element of as well as any additional elements. However, the additional limitations of a dependent claim must not be read or implied into an independent claim if said independent claim does not contain the same limitation. See D.M.I., Inc. v. Deere & Co., 755 F.2d 1570 (Fed. Cir. 1985). In other words, "the dependent claim tail cannot wag the independent claim dog." North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1577 (Fed. Cir. 1993).

 To establish infringement, a plaintiff must prove that every limitation in a given patent claim is found in the accused product exactly or by its substantial equivalent. Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991). Thus, an infringement analysis entails two steps. First, the meaning and scope of the claims in issue must be determined by a study of all relevant patent documents and evidence. Second, these claims must be read on (or compared) to the device accused of infringing. Markman, 52 F.3d at 976; Autogiro Co. of Am. v. U.S., 181 Ct. Cl. 55, 384 F.2d 391, 401 (Ct. Cl. 1967). In light of the recent Supreme Court affirmance of Markman, the first step is unquestionably an issue of law for the court to decide, while the second step is a question of fact. Markman, 116 S. Ct. at 1393. In this Report and Recommendation, this court confines itself solely to the issue of law regarding construction of certain claims at issue, and will not address issues of patent validity or infringement.

 In construing a claim, the court essentially defines the federal legal rights created by the patent document, and must neither narrow nor broaden the scope of a claim to give the patentee something different than what he has set forth. E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir.), cert. denied, 488 U.S. 986, 102 L. Ed. 2d 572, 109 S. Ct. 542 (1988). Claim interpretation requires consideration of the claims, the specification, and the prosecution history as well as testimony from experts or those skilled in the art as to their interpretations. Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561 (Fed. Cir. 1991).

 A patent's specification (the written description, the drawings, and other claims in the patent) must describe the invention in such a way as to enable one of ordinary skill in the art to make and use the invention. Markman, 52 F.3d at 979. The specification must conclude with "one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112. Claims are, therefore, part of the specification and must be read and interpreted as such. Ultimately, however, the claim measures the invention and the fundamental difference between a specification and a claim is that "claims are infringed, not specifications." SRI Intern. v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985). Consequently, not everything in a specification must be read into a claim, and the court cannot read into a claim a limitation that appears in the specification, but not in the claim. Minnesota Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1566 (Fed. Cir. 1992); SRI Intern. 775 F.2d at 1121. In other words, simply because "claims are interpreted in light of the specification does not mean that everything expressed in the specification must be read into all the claims." Raytheon Co. v. Roper Corp., 724 F.2d 951, 957 (Fed. Cir. 1983). In addition, references to a preferred embodiment, such as those in the specifications or drawings, *fn4" are not claim limitations. Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 865 (Fed. Cir. 1988), cert. denied, 490 U.S. 1068, 104 L. Ed. 2d 634, 109 S. Ct. 2069 (1989).

 Most importantly for claim interpretation purposes, the description in the specification can act as a dictionary explaining the invention and defining terms critical to the claims. Markman, 52 F.3d at 979. For this reason, the specification has generally been considered "the primary basis for construing the claims" of a patent. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985). While the words of a claim generally mean what one skilled in the art would ordinarily expect them to mean; sometimes a claim's words may not have the ordinary meaning since a "patentee is free to be his own lexicographer." Markman, 52 F.3d at 930, citing Autogiro, 384 F.2d at 397. However, any special definitions must be set forth in the specification, and words of the claim should be given their ordinary and accustomed meaning, unless it appears that the inventor used them differently. ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1579 (Fed. Cir. 1988).

 Another source relevant to claim construction is the prosecution history as detailed in the file wrapper. The prosecution history contains the entire record of proceedings in the Patent and Trademark Office ("PTO") including express representations made by or on behalf of the applicant to induce the granting of the patent. Often among those representations are amendments and arguments made to convince the patent officer that the claimed invention complies with the statutory requirements of novelty, utility and nonobviousness. The prosecution history, therefore, can provide a record of the applicant's disclaimed or disavowed interpretations which can be excluded by the court in any subsequent claim interpretation. See Standard Oil Co., 774 F.2d at 452. However, just as with the specification, the prosecution history should be used to understand the meaning of the claim language, but cannot alter the limitations contained in the claims. Markman, 52 F.3d at 980.

 Extrinsic evidence provides a final source of information helpful for claim interpretation. Extrinsic evidence encompasses all material external to the patent and prosecution history, including expert testimony. Such evidence cannot vary or contradict the terms of the claims but can help to explain scientific principles, the meanings of technical terms and terms of art which may appear in the patent or prosecution history. In other words, while expert testimony can provide evidence as to the meaning of claim language from which the Court can then determine claim construction, experts cannot provide testimony as to the actual construction of the claim itself. See Markman, 52 F.3d at 980, 981.

 B. Claims at Issue

 In this case, the '550 Reissue Patent claims in issue include independent Claim 115 with dependent Claims 116, 117, 128, 130, 139 and independent Claim 144 with dependent Claims 145, 146, 147, 150, 157, 158, 159, 164, 165 and 167.

 Claim 115 is an independent claim in '550 Reissue Patent which provides:

Support apparatus for restraining a hard surface means in a given position comprising:
substantially vertical strip restraining means for defining a boundary around said hard surface means, said vertical strip restraining means having an upper region, a lower region, an inner surface facing toward said hard surface means for receiving substantially horizontal forces from said hard surface means, and an outer surface facing award from said hard surface means;
base strip extension means extending out from said outer surface of said vertical strip retraining means in said lower region for receiving vertical forces relative to the ground surface; and
force converting means for converting said horizontal forces received by said vertical strip restraining means into vertical forces against said base strip extension means thereby restraining said hard surface means in said boundary, said force converting means including connecting strip means for connecting said vertical strip restraining means to said base strip extension means, said force converting means further including reinforcing means for said connecting strip means;
wherein said connecting means, a portion of said vertical strip restraining means and a portion of said base extension means form a triangular cross section, said connecting means forming a longest side of said triangular cross section;
wherein said vertical strip restraining means and said base strip extension means are connected to one another at said lower region of the vertical strip restraining means; and
wherein said connecting means, a portion of said vertical strip restraining means and a portion of said base extension means form a triangular cross section, said connecting strip means and said base strip extension means each including an aperture therethrough for receiving a stake, said apertures of said connecting strip means and said base strip extension means being aligned around a common axis parallel to said vertical strip restraining means.

 ('550 Reissue Patent, Col. 23, lns. 22-62).

 Claim 144 is also an independent claim in '550 Reissue Patent which provides:

A paving installation, comprising: (i) paving surface means for accommodating traffic which is use experiences substantial horizontal forces at its lateral edge and which is located on top of a substantially level base surface, and (ii) edge restraint means for receiving said horizontal forces and maintaining the paving surface means in position, said edge restraint means being at least partially disposed below local ground level and including:
(a) an upright member engaged with lateral edges of the paving surface means and having sufficient flexibility to accommodate irregular shaped boundaries along said lateral edges with said upright member exhibiting a first surface abuttingly engaging the lateral edges of the paving surface means, a second surface opposed to the first surface, and a top surface;
(b) an extension member disposed laterally of the upright member and including a bottom surface portion located on the base surface; and
(c) force converting means operatively arranged between the upright member and the extension member for transferring the substantial horizontal forces imparted to the first surface of the upright member via the paving surface to the base surface, said edge ...

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