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EAZYPOWER v. VERMONT AMERICAN CORP.

March 26, 2003

EAZYPOWER, PLAINTIFF,
v.
VERMONT AMERICAN CORP. DEFENDANT.



The opinion of the court was delivered by: Ronald A. Guzman, United States Judge

MEMORANDUM OPINION AND ORDER

Plaintiff, Eazypower has sued the Defendant, Vermont American Corp. ("VA") for infringement of U.S. Patent No. 4,876,929 ("the '929 patent") which it owns by assignment. Because the first step for the court in any patent infringement case is claim construction, the parties have submitted briefs in support of their respective positions concerning how the two disputed claim elements ought to be construed. See Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 812 (Fed. Cir. 2002). The purpose of this Memorandum and Order is to set forth the Court's construction of the disputed claim language.

FACTS

The `929 patent, entitled "Portable Screw Driver Having Flexible Extension Shaft," describes a flexible extension shaft that is capable of rotary driven motion that is attached to a chuck of a cordless portable electric screwdriver. (The `929, col. 1, lines 38-45). The purpose of the invention is to help workmen complete screwdriver-related tasks in hard-to-reach areas where a traditional portable screwdriver would not be capable of reaching due to its bulkiness. (Id. at col. 1, lines 12-35).

The parties are in dispute as to the meaning of the word "secured," used twice in claims 1 and 7. The parties are also in dispute as to the scope of the invention, specifically, whether the preamble of claims 1 and 7 serve as a claim limitation or merely a statement of intended use.

ANALYSIS

I. CONSTRUING THE WORD "SECURED"

A. Standard for Claim Construction

The construction of the claims of a patent is a question of law to be determined by the court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995). Claim construction is "a way of elaborating the normally terse claim language: in order to understand and explain, but not to change, the scope of the claims." Scripps Clinic & Research Found v. Genenteck Inc. 927 F.2d 1565, 1580 (Fed. Cir. 1991). In order to understand what the patent claims and teaches, the Court examines from the point of view of one who is reasonably skilled in the art. Minton v. Nat'l Assoc. of Sec. Dealers, Inc., 197 F. Supp.2d 699, 701 (Fed. Cir. 2001). The bounds of the claim scope is determined by the language of the claims. York Products v. Cent. Tractor Farm & Family Ctr, 99 F.3d 1568, 1572 (Fed. Cir. 1996). Terms within the claims are presumed by the court to mean what they say and are given their ordinary and accustomed meaning within the trade. Johnson Worldwide Assoc.'s, Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999). Claim terms cannot be narrowed "by reference to the written description or prosecution history unless the language of the claims invites reference to those sources." Id. at 989-90 (emphasis added).

A party can overcome the presumption of ordinary meaning within claim language in four ways. Altiris v. Symantec Corp., Nos. 02-1137, 02-1138, 2003 WL 289614, at *5 (Fed. Cir. Feb. 12, 2003) (citations omitted). First, if the patentee chooses to act as her own lexicographer, she may do so by setting forth an explicit definition of a term used in the claim. Johnson, 175 F.3d at 990. Second, when intrinsic evidence shows that the patentee has "distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention." Altiris, 2003 WL 289614, at *5 Third, where "the term or terms chosen by the patentee so deprives the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used." Johnson, 175 F.3d at 990 (emphasis added). Fourth, "as a matter of statutory authority, a claim term will cover nothing more than the corresponding structure or step disclosed in the specification, as well as equivalents thereto, if the patentee phrased the claim in step-or means-plus-function format." Altiris, 2003 WL 289614, at *5 (citations omitted).

When construing claims, intrinsic and extrinsic evidence can only be used in certain situations. Minton, 197 F. Supp.2d at 701-02. Intrinsic evidence consists of the claims, specification and the patent prosecution (claims given the most weight, while prosecution receives the least weight); where as extrinsic evidence consists of everything else. Id.

Intrinsic evidence may be considered when the meanings of the words in a claim are in dispute. Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed. Cir. 1988). Because intrinsic evidence is the "most significant source of the legally operative meaning of disputed claim language," use of it alone will, in most situations, determine the meaning of the disputed claim. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, (Fed.Cir. 1996). In such cases, use of extrinsic evidence, even that of expert opinions, is not allowed. Id. Extrinsic evidence is only to be used when intrinsic evidence is not capable of resolving the ambiguity. Id. at 1583.

There are two notable exceptions to the rule that extrinsic evidence consists of everything that is not intrinsic. Minton, 197 F. Supp.2d at 701-02. First, in the interest of education, the Court may look at extrinsic evidence to become aware of the technical background of the invention. Id. Second, the Court may examine dictionaries in order to ascertain the normal meanings of words used in the claim, so long as they do not contradict the patent. Id. at 702.

B. "SECURED" TAXES ON ITS ORDINARY AND ACCUSTOMED MEANING

Eazypower and VA differ as to what is the meaning of the word "secured" used in claims 1 and 7 of the `929 patent. Eazypower proffers that the word "secured" takes on the meaning "to be made fast or firm, as by attaching," whereas VA states "secured" means "a tight and non-rotating attachment." (Pl.'s Mem. in Supp. of its Proposed Claim Const. at 1), (Def.'s Mem. in Supp. of its Proposed Claim Const. at 2). Claims 1 and 7 first use the word "secured" as follows:

. . . said flexible extension shaft including a plurality of concentric coil springs in tightly wound adjacent relation extending between and secured to generally cylindrical body portions at said first and second ends of said shaft to accommodate universal deflection of said shaft relative to said access of chuck . . .
(The `929 patent, col. 5, lines 3-9, col. 6, lines 37-44) (emphasis added). Claims 1 and 7 then use the word "secured" as follows:
. . . a flexible sleeve disposed about said concentric coil springs, said flexible sleeve having cylindrical fittings secured thereto at opposite ends thereof so as to define a shoulder internally of each of said fittings . . .
(Id. at col. 5, lines 9-13, col. 6, lines 44-47) (emphasis added).

VA argues that "secured" must take on the meaning "a tight and non-rotating attachment," because the invention will not work if the cylindrical bodies 20a and 22a are allowed to rotate with respect to the concentric coils, 30, 32, 34. (Def.'s Mem. in Supp. of its Proposed Claim Const. at 4-5). It claims that if the cylindrical body portions 20a or 22a could spin freely, then "rotary motion of the screwdriver could not be transferred to the tool held at the opposite end, and the tool would not rotate." (Id. at 4).

VA argues that because "secured" must mean "a tight and non-rotating attachment" as it is used in reference to the securing of the concentric coils, 30, 32, 34 to the cylindrical body portions 20a or 22a, it must take on that same meaning when used in reference to the flexible sleeve 36 having cylindrical fittings 38 and 40 secured thereto at opposite ends 42 and 44 thereof. (Id. at 5). VA argues this because when an inventor uses words in the patent they must take on the same meaning when used multiple times throughout the claim and specification, citing Fonar Corp. v. Johnson & Johnson, 821 F.2d 627, 632 (Fed. Cir. 1987). (Id).

In support of VA's proffered definition of the word "secured," VA also offers extrinsic evidence in the form of expert testimony and the prosecution history of the European counterpart to the `929 patent. (Def.'s Mem. in Supp. of its Proposed Claim Const. at 6-8). It also submits dictionary definitions of the word "secured" to mean "to make fast: tie down," and of the word "fast" to mean "firmly, fixed, immovable or moved ...


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