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 ...