The opinion of the court was delivered by: Milton Shadur, Senior District Judge.
MEMORANDUM OPINION AND ORDER
This Markman ruling*fn1 addresses the Counterclaim by Whirlpool
Corporation ("Whirlpool") charging patent infringement by Maytag
Corporation ("Maytag").*fn2 That Counterclaim involves a variety of
claim elements in United States Patents Nos. 5,165,433 and 5,803,100*fn3
relating to dishwasher pump and soil separator systems.*fn4 Before the
claims can be construed, it is necessary (1) to review the relevant
technology briefly, (2) to discuss one key principle of claim
construction and (3) to dispose of a minor dispute between the parties.
Dishwasher Pump Technology
On March 3, 2000 Whirlpool and Maytag put on highly informative graphic
presentations for this Court's benefit on the technology involved in the
`433 Patent and the `100 Patent. What follows is a somewhat simplified
summary of what those presentations revealed. And of course no references
here to what the successive patents have disclosed should be
misinterpreted as expressing this Court's views as to whether those
disclosures constituted patentable advances or as to whether, if so,
Maytag has infringed them.
Dishwasher pump and soil separator systems dispense and recirculate hot
and soapy water throughout the washing chamber while extracting soil that
has been removed from the dirty dishware. Various methods have developed
in the art for removing soil particles from the water.
One earlier Whirlpool patent (United States Patent No. 3,335,867)
placed a "full flow filter" in the sump at the bottom of the wash chamber
to prevent large soil particles from being recirculated in the wash. But
that system was not effective for filtering out smaller particles. Then
an improvement, as shown in the `599 Patent, attached a soil collector to
the pump. That system moved water from the sump up into the pump and then
used centrifugal force so that "soil particles are forced to the outer
periphery of the pump chamber," where it was directed into the soil
container by a guide chamber (W.Mem.5). Because the flow of water and
soil into the soil container was relatively slow, particles were filtered
by allowing them to settle on the bottom of the container. That system,
however, still did not remove smaller particles that did not settle, and
the slow rate of water limited the amount of water that was filtered.
Next a more effective means of soil collection was introduced by the
`433 Patent: It, while similar to the `599 Patent, added a fine mesh
filter to the top of the soil container to capture smaller particles.
Water and soil thus flowed from the sump into the centrifugal pump
chamber and into the soil container via the guide chamber. In the soil
container, particles heavier than water settled on the bottom and lighter
particles were captured by the filter at the top, leaving filtered water
to flow back down into the sump. That design also allowed for eight times
the water flow into the soil container than was allowed by the design
disclosed by the `599 Patent.
Finally for present purposes, the `100 Patent disclosed a further
modification that altered the shape of the soil container. To reduce the
volume of water that the soil container held during the wash period, the
soil container was made more shallow except for a "sump area" to collect
the heavier particles.
While this opinion will avoid useless repetition on the law as
discussed in the Opinion, a brief discussion of one key topic is needed.
Citing Toro Co. v. White Consol. Indus., 199 F.3d 1295 (Fed.Cir. 1999)
and Wang Labs., Inc. v. America Online, Inc., 197 F.3d 1377 (Fed.Cir.
M. Mem. 1 incorrectly urges that "as a matter of law, claims
cannot be construed to be broader than what is contained in the
specification." Though to be sure those cases are important recent
developments in the Markman analysis, they do not paint with as broad a
brush as Maytag would have this Court believe.*fn5 Instead they stand
for the quite different proposition that claim elements should not be
broadened "beyond their meaning in light of the specification" (Toro, 199
F.3d at 1302, emphasis added).*fn6
It remains axiomatic that claim language can be broader in scope than
any limitations set forth in the specification. Even more recently Kemco
Sales, Inc. v. Control Papers Co., 208 F.3d at 1362 (Fed.Cir. 2000),
quoting Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed.Cir. 1994), noted "the danger of reading
limitations into the claims from the preferred embodiments":
[A]lthough the specifications [sic] 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.
One key factor in the overall analysis is whether the dictionary
definition of the claim language is "in sufficient detail to resolve
close questions in particular contexts" (Toro, 199 F.3d at 1300)*fn7
Another highly relevant factor may be whether the specification offers
only a single embodiment of the invention (id. at 1301; Wang, 197 F.3d at
1383). But Wang, id. relatedly observes:
Whether an invention is fairly claimed more broadly
than the "preferred embodiment" in the specification
is a question specific to the content of the
specification, the context in which the embodiment is
described, the prosecution history, and if appropriate
the prior art, for claims should be construed, when
feasible, to sustain their validity.
Motion To Strike Expert Testimony
Whirlpool cries "foul" at Maytag's inclusion in its briefing materials
of an "Expert Report of Henry Stoll" (the "Stoll Report"). That report
expresses Stoll's "opinions as to the teachings and claims of" the
patents in suit (Stoll Report at 1). But while Maytag's brief is replete
with references to the Stoll Report, this opinion has ignored those
references as unnecessary to the construction of the relevant claims.
Hence there is no need for any substantive discussion on the propriety of
submitting the Stoll Report.
Disputed Claim Elements in the `433 Patent
Claim 1 includes this element (emphasis added to identify the terms
disputed by the parties):
a second wall disposed outwardly of said first
upstanding annular wall and defining there between a
That language must be read in light of the specification's representation
(1) of the first wall as serving as both the outer wall of the pump
chamber and the inner wall of the guide chamber and (2) of the second
wall as the outer wall of the guide chamber and inner wall of the soil
container. W. Mem. 13-14 asserts that because the specification uses the
term "wall" in an array of ways, this Court should construe "second wall"
broadly as "a structure for holding back pressure that may be of any
shape, size, orientation or formed of any number of individual parts"
(id. at 14).*fn8 But such wishful thinking runs contrary to the words of
the claim because to form a guide chamber "therebetween," the outwardly
disposed second wall must be "upstanding"*fn9 and must surround the
annular first wall.
W.R. Mem. 11 (footnotes omitted) attempts to avoid such a construction:
[T]he inventor has testified that the `433 invention
could readily be implemented using a non-annular guide
chamber. One of the inventor's first prototypes . . .
[used] a "hole" directly from the pump chamber to the
soil container chamber. In the inventor's mind, the
guide chamber of the `433 invention is merely a
"conduit", "pipe" or "path."
Not only is that testimony unacceptable as extrinsic evidence, but it is
also impermissible revisionist history that directly contravenes the
words of the claim. Whirlpool drafted that claim language, and it is
Whirlpool's fault if it did not properly reflect what was supposedly in
the "inventor's mind."
As for the shape of that second wall,*fn10 the specification embodies
only an annular wall that encircles the first concededly annular wall.
W. Mem. 15 nonetheless argues that the omission of the term "annular" in
the claim language as to the second wall, while that term is expressly
used as to the first wall, marks "a clear intent" to avoid that
limitation. It is also true that construing the second wall in claim 1 as
necessarily annular makes that claim nearly identical to claim 2
(W.Mem.15).*fn11 Because that argument has some logical force (though
any nonannular alternative would surely seem to be a less likely
candidate),*fn12 this Court holds that the second wall does not have to
be "annular." Instead it may be square, or in the shape of a pentagon, or
in any other shape that fulfills the in-all-events requirements that it
must be upstanding and must completely surround the first upstanding
It is useful to sum up the end result of the analysis of ordinary
English language usage — and not of Whirlpool's attempted
convolutions — to this point. As used in claim 1, a "guide chamber"
is a space formed between the second upstanding wall and the first
annular upstanding wall that it surrounds, with that second wall being
located radially outward from that first wall.*fn14
To round out the analysis (perhaps a bad pun), this opinion should
eliminate any potential misunderstanding of two other terms —
"annular" and "subjacent"*fn15 — that are relevant to the claim
element under consideration and that this opinion has already used, but
without formal definition. W. Mem. 19-20 suggests that "annular" means
"at least part of a circle, but not necessarily a full circle," and that
"circumjacent" means "lying adjacent to at least a portion of an object,
generally in a curved manner, but again, not restricted to a full
360° surrounding." Again those purported definitions are seriously
warped — not only are they contrary to the terms' dictionary
meanings, but nothing in the `433 Patent suggests any usage different
from those dictionary meanings.
"Annular" means, in the words of the first listed definition in
Webster's Third New International Dictionary (unabridged 1986)
("Webster's") "of or relating to a ring: forming a ring: shaped like a
ring."*fn16 To escape that really tautological usage, W. Mem. 19 points
to a reference in the `599 Patent to the "annular flow" of water and to
soil "flow that follows an approximately 270° path within the soil
container." But an "annular flow" merely describes the circular
(ringlike) orientation of the liquid's flow. Although a patentee may
choose to use the same word in different ways in different patents (part
of the conventional wisdom that a patentee may be his or her own
lexicographer), it is worth noting that the `100 Patent used the term
"substantially annular" to describe a structure that was greater than
270° in circumference but was not completely enclosed (`100 Patent,
col. 6, 1. 25) — something that surely renders it more likely that
the closely related `433 Patent employs "annular" to mean a full
"Second Wall . . . Including an Aperture" in Claim 1
Claim 1 also states that the second wall:
includ[es] an aperture permitting said soil-laden
portion of the wash liquid to flow from said guide
M. Mem. 18 (emphasis in original) seeks a ruling that the quoted language
"requires an aperture, or opening, in the second wall." Whirlpool does
not debate that construction, which ...