United States District Court, N.D. Illinois
January 5, 2004.
LYNDEX CORPORATION Plaintiff,
HEARTECH PRECISION, INC.; PIONEER TRADING CO., LTD.; and DOOSUNG PRECISION COMPANY, Defendants
The opinion of the court was delivered by: MATTHEW F. KENNELLY, District Judge
MEMORANDUM OPINION AND ORDER
Lyndex Corporation has sued Heartech Precision, Inc., its parent
company Pioneer Trading Co., Ltd., and Doosung Precision Company,
contending that Heartech's tool chuck design infringes its patent.
Heartech has moved for summary judgment on the issue of infringement. For
the reasons stated below, the Court denies Heartech's motion.
Lyndex is a distributor of a grooved machine tool chuck covered by
United States Patent number 6,105,974. The chuck is inserted into a
machine tool, such as a lathe or a milling machine, and is designed to
hold tool elements with greater gripping torque (chuck force) than other
chucks. The following diagram derived from the specification of the `974
patent and a highlighted version of a prior art chuck from Fig. 8 of the
`974 Patent below, illustrates a cross-section of the chuck and shows how
it creates chuck force:
[EDITORS' NOTE: FIGURE IS ELECTRONICALLY NOT TRANSFERABLE.]
The chuck force is generated when a clamp sleeve 5 (highlighted in
blue) is rotated clockwise around a chuck sleeve 1C (highlighted in red),
moving the clamp sleeve upward along the outside of the chuck sleeve as
indicated by the blue arrow. `974 patent, col. 2, lines. 4-25. Due to the
inner tapered surface of the clamp sleeve 5, the clamp sleeve's upward
movement against the chuck sleeve causes the clamp sleeve to strongly
press the chuck sleeve inward, as indicated by the red arrows. This
causes the chuck sleeve to deform radially inwardly, reducing its inner
diameter and bringing it into contact with the tool 7. This generates the
chuck force that holds the tool in the chuck during machining operations.
The invention claimed in the `974 Patent is directed toward increasing
the chuck force along the length of the chuck sleeve by increasing the
chuck sleeve's deformation in the area nearest the chuck flange.
See `974 patent col. 3, lines. 36-39.
Hearteach and its parent company Pioneer designed their own tool chuck
which Lyndex believed to be an exact copy of its patented design. Lyndex
informed Pioneer and Heartech that it believed that Heartech's chuck
design infringed on its intellectual property and followed up this
notification with a letter in November of 2002. After receiving this
notification, Heartech created a second chuck which modified the design
of its first chuck by moving the position of the groove radially
outwardly along the end surface of the flange (see diagram below). Lyndex
argues that this modified
[EDITORS' NOTE: FIGURE IS ELECTRONICALLY NOT TRANSFERABLE.]
design also infringes the `974 patent. Heartech has filed a motion
for summary judgement on the issue of infringement
Summary judgment is appropriate in a patent case, as any other case,
when there is no genuine issue as to any material fact and the moving
party is entitled to judgment as a matter of law. Fed.R.Civ.P.56(c);
Avia Group International, Inc. v. L.A. Gear California, Inc.,
853 F.2d 1557,
1561 (Fed. Cir. 1988). In determining whether there is a genuine
issue of fact, we view the evidence and draw all reasonable inferences in
favor of the party opposing the motion. Stimsonite Corp. v. Nightline
Markers, Inc., 33 F. Supp.2d 703, 705 (N.D. Ill. 1999).
A patent infringement analysis entails two steps. The first is
determining the meaning and scope of the patent claims alleged to be
infringed. The second step is comparing the properly construed claims to
the device accused of infringing. See, e.g., Bayer AGv. Elan
Pharmaceutical Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000);
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.
Cir. 1995). To prove literal infringement, the patent holder must show
that the accused device contains every limitation in the asserted claims.
Kraft Foods, Inc. v. International Trading Co., 203 F.3d 1362,
1370 (Fed. Cir. 2000). To prove infringement under the doctrine of
equivalents, the patent holder must show that the accused device contains
each limitation of that claim or its equivalent. Jeneric/Pentron,
Inc. v. Dillon Company, Inc., 205 F.3d 1377, 1383 (Fed. Cir. 2000)
(citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
520 U.S. 17, 40 (1997)). Conversely, "[f]or any given claim,
`infringement is avoided when one element (or substitute falling within
a permissible range of equivalents) is absent.'" Watts v. XL Systems,
Inc., 232 F.3d 877, 884 (Fed. Cir. 2000) (quoting Senmed,
Inc. v. Richard-Alien Medical Industries, Inc., 888 F.2d 815,
818 n.2 (Fed. Cir. 1989).
Infringement is a question of fact. See, e.g., Moore U.S.A., Inc.
v. Standard Register Co., 229 F.3d 1091, 1105 (Fed. Cir. 2000).
However, if no fact finder reasonably could find that the patent's claims
literally read on the accused device, summary judgment of no literal
infringement is appropriate. Johnston v. IVAC Corp.,
885 F.2d 1574, 1580 (Fed. Cir. 1989). Similarly, where the
evidence is such that no reasonable jury could determine two
elements to be equivalent, "a district court is obliged to grant summary
judgment of non-infringement" under the doctrine of equivalents.
Warner-Jenkinson, 520 U.S. at 39 n.8.
Lyndex contends that both Heartech's first and second chuck designs are
at issue in this case. However, because Heartech has moved for summary
judgment only on the issue of whether its second chuck design infringes
on the `974 patent, the question of whether its first design also
infringes is not before the Court at this time.
The `974 patent contains eleven claims. Claims 1 through 9 require:
a groove having a predetermined depth . . . formed
in the end surface of said flange opposite said
shank portion such that said groove extends along
the outer circumference of the base end of said
chuck sleeve . . .
`974 patent, col. 13, lines 24-30. Claims 10 and 11 require:
a ring shaped groove therein immediately adjacent
said chuck sleeve, the ring-shaped groove having a
circumferentially arranged inner cylindrical
surface which joins with the outer circumferential
surface of the chuck sleeve immediately adjacent
said ring-shaped groove.
`974 patent, col. 14, line 64 col. 15, line 2. Heartech
argues that the accused device does not infringe the `974 patent because
it does not contain a groove that "extends along the outer circumference
of the base end of [the] chuck sleeve" or is "immediately adjacent said
"In construing claims, the analytical focus must be centered on the
language of the claims themselves, for it is that language that the
patentee chose to use to `particularly point out and distinctly claim
the subject matter which the applicant regards as his invention.'"
Interactive Gift Express,
Inc. v. CompuServe, Inc., 256 F.3d 1323, 1331 (Fed. Cir.
2001) (quoting 35 U.S.C. § 112, par. 2). There is a heavy presumption
that the terms used in the claims have the ordinary meaning that would be
attributed to those words by persons skilled in the relevant technology.
See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
(Fed. Cir. 2002); see also, K-2 Corp. v. Salomon S.A.,
191 F.3d 1356, 1362-63 (Fed. Cir. 1999). A claim term is to be given
the full range of its ordinary meaning as understood by persons skilled
in the relevant technology unless there is a compelling reason not to do
so. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336,
1342 (Fed. Cir. 2001); see also Johnson Worldwide Assocs., Inc. v. Zebco
Corp., 175 F.3d 985, 989 (Fed. Cir. 1999).
The Federal Circuit has recently indicated that a court can and should
consult dictionary definitions in construing claim terms. Texas
Digital Systems, Inc., v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.
Cir. 2002). Dictionaries that are publicly available when the patent was
issued "are objective resources that serve as reliable sources of
information on the established meanings that would have been attributed
to the terms of the claims" by persons skilled in the relevant technology
and thus "may be the most meaningful sources of information" to be used
in claim interpretation. Id. at 1203.
Because particular words may have multiple dictionary definitions, some
of which may have no relation to the claimed invention, the intrinsic
record must always be consulted to identify which of the different
possible dictionary meanings of the claim terms in issue is most
consistent with the inventor's use of the terms. Texas Digital,
308 F.3d at 1203. The intrinsic record must also be examined to determine
whether the presumption of ordinary and customary meaning is rebutted.
If, for example, the specification contained in the patent uses a term in
a manner "clearly inconsistent" with the ordinary
meaning as shown by a dictionary definition, then the dictionary
definition must be rejected. Id. It is inappropriate, however,
to consult the intrinsic record to determine the meaning of claim terms
before attempting to discern the ordinary and customary meanings
attributed to the words themselves. Id. To do so would violate
the rule that limitations from the specification may not be imported into
the claims so as to limit their scope. Id.; see generally
Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1277 (Fed.
Cir. 1995) ("[A] patent claim is not necessarily limited to a preferred
embodiment disclosed in the patent."); SRI Int'l, Inc. v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 n. 14 (Fed. Cir. 1985) (en
bane) ("That a specification describes only one embodiment does not
require that each claim be limited to that one embodiment")
Heartech's motion for summary judgment turns on the meaning of the term
"along" found in claim 1 of the `974 Patent. Heartech argues that a
groove extending "along" the base end of the chuck sleeve requires that
the groove come in contact with the outer surface of the chuck sleeve. By
contrast, Lyndex contends that the ordinary meaning of the word "along"
does not require the groove to touch the outer surface of the chuck
sleeve. The Court agrees with Lyndex.
Consistent with Texas Digital, a court should "resort
initially to the relevant dictionary definitions to determine the
ordinary meaning of the [disputed] term." E-Pass Technologies, Inc.
v. 3Com Corp., 343 F.3d 1364, 1367 (Fed. Cir. 2003). The
American Heritager Dictionary of the English Language says that
"along" means "on a line or course parallel and close to; continuously
beside: rowed along the shore; the trees along the avenue."
American Heritage Dictionary of the English Language 50 (4th ed. 2000).
This definition and the illustrative examples it provides reflect that
an object can be "along" another object even if the two do not come
in contact. Rather, the two objects need only be "parallel" and "close
to" each other.
The next question is whether the context in which the term "along" is
used in the claim indicates a departure from the term's ordinary meaning.
E-Pass, 343 F.3d at 1368. It does not. Nothing in the context
suggests that the groove must touch the outer surface of the chuck
There is a heavy presumption that the term "along," as used in the
claim, should carry its ordinary meaning. E.g., E-Pass, 343 F.3d
at 1368; Sunrace Roots Enterprise Co. v. SRAM Corp.,
336 F.3d 1298, 1302 (Fed. Cir. 2003). As indicated in Texas Digital,
however, we next look to the specification to see if the presumption has
been rebutted. Texas Digital, 308 F.3d at 1204; E-Pass,
343 F.3d at 1369. This occurs when the patentee "acted as his own
lexicographer and imbued the claim terms with a particular meaning or
`disavowed or disclaimed scope of coverage, by using words or expressions
of manifest exclusion or restriction.'" E-Pass, 343 F.3d at 1369
(quoting Texas Digital, 308 F.3d at 1204). Such is not the case
here. It is true, as Heartech points out, that the specification and the
diagrams accompanying the patent show the groove to be in contact with
the outer circumference of the chuck sleeve. But the specification is
simply the "preferred embodiment" of the patent, see' 974, col.
6, line 35, there is nothing to suggest that it describes the patent's
sole embodiment, or to put it another way, that the patentee
intended to restrict the claims in this manner.The Federal Circuit has
aptly pointed out that "[i]nterpretation of descriptive statements in a
patent's written description is a difficult task, as an inherent tension
exists as to whether a statement is a clear
lexicographic definition or a description of a preferred
embodiment." Id. at 1369. But in this case it is clear that the
latter is what was intended, not the former; Heartech points to nothing
in the description of the preferred embodiment that reflects an intent or
effort by the patentee to define the term "along", as opposed to
simply describing a particular embodiment of the patent. See id.
Under the circumstances, to read the term "along" in the manner urged by
Heartech would improperly limit the patent to its preferred embodiment.
In its reply brief, Heartech argues that the groove's function in the
patent can be accomplished only if it is in contact with the chuck
sleeve. This argument is forfeited because it was not made in Heartech's
opening brief, but even if not forfeited it would be meritless, as
Heartech has failed to provide any factual support for its assertion
(aside from an attempted interpretation of the preferred embodiment,
which is improper for the reasons previously discussed).
Literal infringement exists when the accused device contains every
limitation in the asserted claims. E.g., Kraft Foods, Inc. v.
International Trading Co., 203 F.3d 1362, 1370 (Fed. Cir. 2000). The
absence of even one such limitation compels a finding of
non-infringement. See, e.g., Watts v. XL Systems, Inc.,
232 F.3d 877, 884 (Fed. Cir. 2000). In arguing that it is entitled
to summary judgment on the issue of literal infringement, as to claims
1-9, Heartech relied exclusively on is proposed construction of the claim
term "along." Because the Court has rejected that construction, Heartech
is not entitled to summary judgment of non-infringment on these claims.
Under the circumstances, no purpose would be served by addressing at this
time its arguments regarding literal infringement as to claims 10 and 11
and infringement under the doctrine of equivalents.
For the reasons stated above, defendant's motion for summary judgment
[Docket #11] is denied. The case is set for a status hearing on January
13, 2004 at 9:30 a.m.
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