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PANDUIT CORPORATION v. HELLERMANNTYTON CORPORATION

August 10, 2004.

PANDUIT CORPORATION, Plaintiff,
v.
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.

I. DISCUSSION

  A. Markman Claim Construction

 
1. "A projection extending laterally from a top wall of the offset power box"
  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's interpretation).

  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 element.

  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 three together.

  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 below.

  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 "in."

  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 ...


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