United States District Court, N.D. Illinois, Eastern Division
August 10, 2004.
PANDUIT CORPORATION, Plaintiff,
HELLERMANNTYTON CORPORATION, Defendant.
The opinion of the court was delivered by: HARRY LEINENWEBER, District Judge
MEMORANDUM OPINION AND ORDER
In 2001, Plaintiff Panduit Corporation (hereinafter, "Panduit")
resolved a dispute with Defendant HellermannTyton Corporation
(hereinafter, "HellermannTyton") by signing a settlement
agreement in which HellermannTyton agreed to stop making and
selling certain products to avoid infringing Panduit's U.S.
Patent No. 5,998,732 (the "'732 Patent"). Panduit has now brought
this action against HellermannTyton for infringement of its '732
Patent, and breach of the 2001 settlement agreement. The Court
has since stayed the infringement claim pending a reexamination
of the '732 Patent by the Patent and Trademark Office, but the
breach of contract claim remains active. As part of litigating
these two claims, the Court asked both parties to submit Markman
claim construction briefs. Panduit's initial brief sought
construction of only Claim 1 of the patent's 24 claims. In
response, HellermannTyton requested construction of only six
terms within Claim 1. The Court's claim construction follows
below. HellermannTyton also submitted a Motion for Judgment on the
pleadings with respect to Claims 2-24.
A. Markman Claim Construction
1. "A projection extending laterally from a top wall of the offset
There are six disputed phrases within Claim 1 requiring the
Court's interpretation. Panduit asks the Court to construe the
first disputed phrase, "a projection extending laterally from a
top wall of the offset power box," as meaning that "the claimed
`projection' is formed integrally with a top surface of the
offset power box. The projection extends laterally toward the
trunking duct." HellermannTyton counters by arguing that "[t]o
require a projection that extends laterally from a top wall of
the offset power box means that the top wall of the offset power
box cannot be the extension itself, otherwise the `top wall'
would not have an extension." Thus, with respect to disputed
phrase one, it appears the parties disagree about only one thing:
whether the "projection" constitutes a separate piece from the
top wall (HellermannTyton's interpretation), or is formed
integrally with the top surface of the offset power box
Panduit supports its claim by arguing that HellermannTyton's
interpretation would exclude the preferred embodiment.
HellermannTyton disputes this, claiming that the preferred
embodiment has both a top wall and a separate lateral extension. After reviewing the illustrations that depict the '732 Patent's
preferred embodiment, the Court agrees with Panduit. Based on
these diagrams, the Court finds that the "projection" is
integrated entirely with the "top wall," forming a single
As a result, the Court accepts Panduit's interpretation of
disputed phrase one. Although HellermannTyton's reading has some
linguistic appeal, "a claim construction that excludes a
preferred embodiment is rarely, if ever, correct." Dow Chem. Co.
v. Sumitomo Chem. Co., 257 F.3d 1364, 1378 (Fed. Cir. 2001).
HellermannTyton has given the Court no reason to depart from this
general rule. Therefore, the Court finds for Panduit as to the
construction of disputed phrase one.
2. "An opening formed in the abutment portion of the projection is
in communication with an aperture framed in a side wall of the
offset power box adjacent the duct."
HellermannTyton breaks the above clause into disputed phrases
two [". . . abutment portion"], three ["aperture formed in a side
wall"] and four ["opening . . . is in communication with an
aperture"]. However, for purposes of judicial efficiency, the
Court finds that it makes more sense to discuss phrases two and
Panduit asks the Court to define the "opening formed in the
abutment portion" as an "open area made within the cross-section
of the projection at its end portion." Linguistically, this is
nearly identical to HellermannTyton's preferred reading, in which
the phrase means "the abutment portion must have a void space within
its limits." However, although similar in wording, the two
parties place different conditions and limitations on the phrase.
The Court discusses these disagreements in claim construction
Panduit and HellermannTyton clash as to whether the "opening"
is located in the "abutment portion" or the "projection at its
end portion." Panduit argues that the phrase "opening formed in
the abutment portion of the projection" really means "open area
made within the cross-section of the projection at its end
portion." Panduit states that this construction is "made clear in
the specification," but does little else to support its
construction. In contrast, HellermannTyton notes that earlier the
patent described the "abutment portion" as "depending from a
farthest extent of the top portion." HellermannTyton defines (and
Panduit offers no counter-definition) "depends" as "hang down, be
suspended from." From this HellermannTyton concludes that the
abutment portion must hang down from the farthest extent of the
top portion. In doing so, HellermannTyton argues that the '732
Patent distinguishes between the effective end portion of the
projection, and the abutment portion of this projection. This
Court agrees with HellermannTyton. The patent clearly requires an
opening in the "abutment portion," which is an area that hangs
down or descends from the farthest point of the top surface of
the projection. Accordingly, the opening must be in the descended
portion, and cannot be in the top portion's end portion.
The parties also spar over the definitions of "in" and "formed
in." Technically, HellermannTyton contests these definitions only
with respect to the "aperture" and not as to the "opening."
However, given the general rule that a claim means the same thing
each time in a given patent, the Court infers that
HellermannTyton believes its definitions should apply to the
entirety of Claim 1.
To begin, HellermannTyton's claim construction places several
limits on "in" that Panduit mostly does not contest.
Specifically, HellermannTyton argues that "In' does not mean
`on,' `in' does not mean `near,' `in' does not mean `over,' `in'
does not mean `above,' `in does not mean `behind.'"
HellermannTyton thus asks the Court to define "in" as "within the
limits." With respect to the definition of "in," Panduit
specifically disputes only HellermannTyton's contention that
"`In' does not mean `on'" correctly noting that the Shorter
Oxford English Dictionary lists "on" as one possible definition
(Panduit also disputes that "`in' does not mean `above'" but
provides no support for its assertion). This leads Panduit to
argue for the broader definition of "in" as "with reference to."
However, although Panduit correctly notes that "on" is indeed a
possible definition of "in," it is certainly not a common or
typical one. For example, if Dick told Jane to look for a pen on
the desk, he would be asking her to look on the top of the desk. Conversely, if Dick asked Jane to look in the
desk, he would be asking her to look inside a desk drawer. Here
too, the specifications and diagrams clearly show an
opening/aperture in the abutment portion/side wall, and not on
the abutment portion/side wall. The Court therefore accepts
HellermannTyton's above listed limitations on the definition of
Although not generally objecting to HellermannTyton's
limitations on "in," Panduit does argue for a specific definition
of the term "formed in." Panduit argues that the term "formed in"
requires merely that the opening and aperture consist of "open
space." In Panduit's view, these terms do not demand that this
open space take any particular shape or form. Conversely, in
connection to the aperture, HellermannTyton contends that the
term "formed in" requires a hole bounded by something on all
sides, as that is the only type of void space that "completely
resides within the limits or boundaries of the side wall."
However, none of HellermannTyton's provided dictionary
definitions state that "in" means "completely resides within the
limits." Indeed, the preferred specification of the "opening"
shows that the "opening formed in the abutment portion" does not
"completely reside within" the abutment portion. Rather, the
opening is bounded by the abutment portion on the right, left,
and top but not on the bottom. The Court infers from this that
although the aperture and opening both require open space, the open space does not need to
take any particular shape or form. It could indeed be completely
encircled such as the void space contained within a square,
like so "." Alternatively, it could be bounded on multiple
sides, with one empty side as in the English letters "U" or "C"
or the Hebrew letters "" or "." The Court uses these analogies
because its limited word processing capabilities do not enable it
to copy the elaborate graphs found in the parties' briefs.
Therefore, the Court mostly agrees with HellermannTyton that
"formed in" means "formed within," but disagrees that it requires
something that "completely resides within."
However, just because the opening and aperture is not limited
to a specific configuration, e.g., a square, does not mean that
the '732 Patent grants Panduit unlimited breadth in defining its
scope. In particular, the Court takes issue with one portion of
Panduit's proposed construction of an "aperture formed in a side
wall." Panduit contends that the aperture can "extend the full
height and width of the offset power box" (emphasis in original).
In doing so, Panduit states that the "open side wall area would
occupy the entire side wall area . . . there would be no solid
side wall area." Panduit reaches its construction by noting that
in the description of the preferred embodiment, "the longitudinal
extent of the aperture 82 may be as large as the distance between
the two alignment bosses 76 depending on the application."
However, Panduit fails to acknowledge, as HellermannTyton points out, that
the description also states that "[t]he box side wall 40 also has
an aperture 82 formed therein." This is consistent with the
actual claim language, in which the aperture is "formed in a side
wall." If, as Panduit claims, the aperture can consist of the
entire side wall area, then there would be no "side wall" in
which the aperture could be "formed in." Therefore, while the
Court agrees with Panduit that the aperture and opening need not
take any specific shape, they clearly cannot be so expansive so
that they cease to be "formed in" something else namely,
something solid. The '732 Patent, by stating that the opening is
"formed in the abutment portion" and that the aperture is "formed
in a side wall," by the necessity of plain English requires both
a solid abutment portion and a solid side wall to exist. Still,
Panduit's argument that the patent grants flexibility as to the
longitudinal extent of the aperture has merit. Therefore, the
Court finds that while the aperture and opening cannot be so wide
such that the corresponding abutment portion or side wall ceases
to exist, the '732 Patent nevertheless permits substantial
leniency in how wide or narrow the opening or aperture must be.
3. "opening . . . is in communication with an aperture formed in a
side wall of the offset power box adjacent the duct"
HellermannTyton proposes a claim construction, and Panduit does
not dispute, that Claim 1 requires two distinct structures; an opening and an aperture, both of which must be in communication
with each other. HellermannTyton argues that the "opening" cannot
also be the "aperture" since if that were the case, the opening
cannot communicate with the aperture. Moreover, HellermannTyton
also proposes that the term "an opening . . . is in communication
with an aperture" to require 1) an opening; 2) a separate
aperture formed in the sidewall (both of which are discussed in
the pervious section); and 3) joinder of the opening and the
aperture by two adjacent interior flanges, the exterior of a
duct, and a bottom surface of the top portion. Because
HellermannTyton's construction is consistent with the preferred
embodiment of the '732 Patent and because Panduit does not
provide a competing construction, the Court accepts
HellermannTyton's interpretation of this term.
4. "An abutment surface depending from a top surface of the
extension adapted to be disposed flush against the abutment
portion of the projection"
With respect to disputed phrase five, Panduit defines the term
"abutment surface" as an edge portion having an abutment surface
formed integrally with a top surface of the communication
extension. HellermannTyton at least accepts that the "abutment
surface" is on the separate "communication extension." The
parties also seem to be in agreement that the "abutment portion"
is the surface on the projection of the offset power box. Panduit
also claims, and HellermannTyton does not contest, that the
abutment surface of the extension and the abutment surface of the
projection (which HellermannTyton refers to in its brief as "abutment
portion") are separate elements.
The abutment surface on the surface of the communication
extension, according to Panduit, is "adapted to fit flush
against" the abutment surface on the projection of the offset
power box (abutment portion). In turn, HellermannTyton asks the
court to define the "abutment surface" as the portion of the
extension "that is `disposed flush against the abutment portion
of the projection.'" The Court interprets HellermannTyton's
definition to require that the "abutment surface" is formed only
after the communication extension and the offset power box,
through their respective abutment surfaces, are flushed together.
In other words, HellermannTyton's construction refers to the area
formed by the joinder of the communication extension and the
projection of the offset power box. However, Claim 1 explicitly
states that the abutment surface depends from the "top surface of
the extension adapted to be disposed flush against the abutment
portion." (emphasis added). HellermannTyton's interpretation
completely disregards the term "to be" which the Court accepts as
an indicator that the description is of the surface found on the
separate and independent top surface of the communication
extension, which is designed later to fit flush against the
"abutment portion." The description, as HellermannTyton would
require, is not necessarily limited to the area formed after the two bodies are joined
Furthermore, HellermannTyton itself offers two competing
constructions of "abutment surface." HellermannTyton first agrees
with Panduit that the "abutment surface" is on the separate
communication extension, and later asks the Court to define
"abutment surface" as portion of the communication extension that
is "disposed flush against the abutment portion of the
projection," which, as described above, is an area formed against
the "abutment portion." Therefore, the Court adopts Panduit's
proposed construction for this term.
5. "A routing notch formed in the abutment surface"
As to disputed phrase six, Panduit proposes the term "a routing
notch formed in the abutment surface" to have a "clearance in the
edge portion of the communication extension through which wires
may be routed out." HellermannTyton counters that "because the
`abutment surface' is the portion of the communication extension
that is `disposed flush against the abutment portion of the
projection,' the communication extension must contain within its
limit the `routing notch.'" As stated in the previous section,
the Court does not accept HellermannTyton's definition that the
"abutment surface" forms part of the communication that is
"disposed flush against the communication extension." Therefore,
the routing notch is not a "hole" bounded on all sides by solid structure, as HellermannTyton's proposed claim construction would
require. Panduit's interpretation that the "routing notch" is a
clearance (or open area) made within the cross-section of the
communication extension is also supported by the figure view of
the communication extension (FIG. 5). Panduit's argument is also
consistent with the description of the preferred embodiment which
states that "[a] routing notch 116 is formed in the abutment
surface 94 between the longitudinally spaced extension latching
elements 112 adjacent the power box 12, and preferably
corresponding in longitudinal extent to the opening 80 formed in
the abutment portion 74 of the power box 12. A slight bevel 118
further defines the routing notch 116 and provides increased
clearance for routing the power conductors 34." The Court also
notes that this construction is consistent with previous
interpretations in which the Court decided that the term "formed
in" does not necessarily require something that "completely
As a result, the Court also accepts Panduit's interpretation of
this disputed term because HellermannTyton's construction
excludes the preferred embodiment.
B. Motion for Partial Judgment on the Pleadings
In addition to the dueling Markman briefs, HellermannTyton also
has submitted a motion for partial judgment on the pleadings.
Specifically, HellermannTyton seeks a judgment on
non-infringement on Claims 2-24 of the '732 Patent. HellermannTyton argues that
Panduit admitted that HellermannTyton's Offset Box Assembly
product does not infringe Claims 2-6, 9-16, and 18-22.
Furthermore, HellermannTyton contends that Panduit failed to
submit any claim construction for Claims 7, 8, 17, 23, and 24. As
a result, HellermannTyton argues that the Court cannot find
infringement of these claims.
As an initial matter, the Court notes that since the date in
which HellermannTyton filed its motion for judgment on the
pleadings, the Court has stayed the patent infringement portion
of Panduit's case. HellermannTyton's motion for judgment on the
pleadings specifically asks the Court only for a "judgment of
non-infringement of Claims 2-24" of the '732 Patent and not for
judgment on the pleadings as to Panduit's Count II for breach of
the settlement agreement. As the infringement claim is stayed in
its entirety, so is HellermannTyton's motion for judgment on the
For the reasons stated herein, the Court:
1. Accepts Panduit's construction on the disputed phrase "a
projection extending laterally from a top wall of the offset
2. With respect to the phrase "an opening formed in the
abutment portion of the projection is in communication with an aperture formed in a side wall of the offset power box adjacent
the duct," the Court:
a) accepts HellermannTyton's reasoning that the
abutment portion must hang down from the farthest
extent of the top portion;
b) accepts all of HellermannTyton's limitations on
the word "in";
c) rejects HellermannTyton's contention that "formed
in" requires something that "completely resides
d) rejects Panduit's claim that the aperture and
opening may be so wide such that the corresponding
abutment portion or side wall ceases to exist; and
e) accepts HellermannTyton's construction that Claim
1 requires two distinct structures an opening and
3. Accepts accepts Panduit's interpretation of the remaining
two disputed terms: "an abutment surface depending from a top
surface of the extension adapted to be disposed flush against the
abutment portion of the projection," and "a routing notch formed
in the abutment portion."
4. Concerning HellermannTyton's Motion for Partial Judgment on
the Pleadings, the Court STAYS the motion as it entirely
concerns the previously stayed infringement claim.
IT IS SO ORDERED.
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