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BLACK & DECKER INC. v. ROBERT BOSCH TOOL CORPORATION

September 28, 2005.

BLACK & DECKER INC. and BLACK & DECKER (U.S.) INC., Plaintiffs,
v.
ROBERT BOSCH TOOL CORPORATION, Defendant.



The opinion of the court was delivered by: AMY ST. EVE, District Judge

MEMORANDUM OPINION AND ORDER

Plaintiffs Black & Decker Inc. and Black & Decker (U.S.) Inc. (collectively "Black & Decker) sued Defendant Robert Bosch Tool Corporation ("Bosch") for patent infringement, alleging infringement of various claims of U.S. Patent Nos. 6,308,059 ("the `059 patent") and 6,788,925 ("the `925 patent").*fn1 On September 26, 2004, the Court conducted a Markman hearing during which it heard evidence and argument regarding the construction of various claim terms in the asserted patents. The Court's construction of these claim terms is set forth below.

LEGAL STANDARD

  A determination of patent infringement is a two-step process in which the court first construes the claims. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). In the first step, claim construction, the court interprets the patent claims that define the scope of the patentee's rights under a patent. Claim construction is a matter of law exclusively for the court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). In the second step, the factfinder compares the properly construed claims to the accused device to determine, as a question of fact, whether all of the claim limitations are present in the accused device. Cybor, 138 F.3d at 1454.

  The Federal Circuit recently summarized the principals of claim construction in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). A court must "look to the words of the claims themselves ? to define the scope of the patented invention." Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Courts should generally give the words of the claim their ordinary and customary meaning, which is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips, 415 F.3d at 1312-13. Further, a court cannot look at the ordinary meaning of a claim term "in a vacuum," but must "look at the ordinary meaning in the context of the written description and the prosecution history." V-Formation, Inc. v. Bennetton Group SpA, 401 F.3d 1307, 1310 (Fed. Cir. 2005).

  Other claims of an asserted patent may guide a court in construing claim terms. Vitronics, 90 F.3d at 1582. A court should presume that limitations in a dependent claim are not present in the corresponding independent claim. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). Also, the Federal Circuit has directed that a court must read the claims in light of the specification, explaining that:
Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.
Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The prosecution history is also part of the intrinsic record, although the Federal Circuit has recognized that because it "can often inform the meaning of claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would be otherwise." Phillips, 415 F.3d at 1317.

  In construing claims, district courts may also look to extrinsic evidence such as "expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. Compared to the intrinsic record, though, extrinsic evidence is less significant. C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004). The Federal Circuit in Phillips specifically addressed the status of dictionaries in the claim construction process. Phillips, 415 F.3d at 1320-24. While dictionaries may assist the court to better understand the manner in which one of ordinary skill in the art would use the term, Vitrionics, 90 F.3d at 1584, n. 6, a court should not adopt a dictionary definition "entirely divorced from the context of the written description." Phillips, 415 F.3d at 1321. Accordingly, at the outset of claim construction, the district court should focus on "how the patentee used the claim term in the claims, specification, and prosecution history." Id.

  BACKGROUND

  I. The Asserted Patents

  Black & Decker accuses Bosch of infringing various claims from two United States patents. Black & Decker's patents generally relate to rugged radios used by construction workers in adverse working conditions. Joseph Domes ("Domes") is the named inventor on each patent. The `059 patent derives from provisional application No. 60/069/372, filed on December 12, 1997. Domes filed application No. 09/209,721, that ultimately issued as the `059 patent, on December 11, 1998. The `059 patent issued on October 23, 2001. Domes filed a continuation application, No. 09/963,356, that issued as U.S. Patent No. 6,456,837 ("the `837 patent").*fn2 From that application, Domes filed another continuation application, No. 10/215,657, that issued as the `925 patent on September 7, 2004. Because of this relationship between the `925 and `059 patents, those patents share the same specification. Each of the asserted patents is titled "Ruggedized Tradesworkers Radio."

  II. The Prosecution History Of The `059 Patent

  Domes filed a provisional application on December 12, 1997. On December 11, 1998, he filed application No. 09/209,71. The Patent Examiner issued an Office Action on December 21, 2001, rejecting all but two of the pending claims, and objecting to the remaining two claims. (R. 53-1; Joint Appendix, FH059069-076.) The Examiner rejected those claims under 35 U.S.C. § 103(a) as obvious in view of the combination of two prior art references — the Eggering reference and the Bohnstedt reference.*fn3 (Id.) The examiner objected to two of the claims as depending from a rejected claim. (Id.)

  The patent attorney for Domes interviewed with the Examiner on April 3, 2001. (Id. FH059079.) The summary for that interview provides that the participants agreed that Domes would amend claim 1 to incorporate some of the features from pending claim 19 to achieve possible allowance. (Id.) In a subsequent Amendment, Domes provided that during the interview the Examiner:
noted that a significant feature of the present invention, which is neither disclosed nor suggested in the references of record, is the provision of circuitry in the subject invention that allows the portable radio to operate off of various types of conventional, portable tool battery packs, regardless of output voltage. This feature not only provides operational versatility, but an inherent side benefit is that the present invention can also be employed for charging portable tool battery packs of numerous sizes and voltages. This feature is particularly beneficial to tradesworkers, such as carpenters, who frequently use battery powered power tools of various types in the field that periodically require recharging. For these individuals, the present invention serves not only a portable radio [sic], but also as a universal charger for their battery-powered tools.
(Id. FH059086.) Domes further provided that:
Original claim 19 was discussed during the interview as being directed to structure that facilitates the use of the subject invention with batteries of different voltages. [The Examiner] acknowledged the differences between claim 19 and the cited Bohnstedt et al. reference (U.S. Patent No. 3,458,794), and further acknowledged that not all of the features of claim 19 would probably be necessary to distinguish over the references of record.
(Id. FH059086.) Domes canceled his pending claims, replacing them with new claims 27-39. Domes explained the new claims as follows:
claim 27 recites a combination portable radio and battery charger that includes a radio, an AC powered DC power supply for powering the radio and charging a removable DC voltage power supply, a removable DC power supply for powering the radio and being charged by the AC powered DC power supply, and a power conversion circuit to enable the removable DC power supply to power the radio and be charged by the AC powered DC power supply, regardless of the output voltage magnitude from the removable DC power supply. The AC powered DC power supply generates an output voltage having a magnitude sufficient to power the radio, while the removable DC power supply is selected to generate an output voltage having a magnitude in a range that includes voltages both lower and higher than the magnitude of the output voltage from the AC powered DC power supply. The power conversion circuit is disposed between the AC powered DC power supply and the removable DC power supply, and between the radio and the removable DC power supply, to accommodate the voltage output or requirement variations among these three elements.
As stated previously, the invention recited in claim 27 is advantageous in that the removable power supply, which may be a portable power tool battery pack, for example, can be of any desired output voltage, and still be employed either to power the radio or to be charged by the AC powered DC power supply. This is made possible by provision of the power conversion circuit that adjusts the voltage that is either supplied by the AC powered DC power supply to the removable power supply, or supplied by the removable power supply to the radio. In the preferred embodiment, the power conversion circuit is implemented by a pair of DC/DC converters, one which adjusts, up or down, the output voltage from the AC powered DC power supply to the removable DC power supply, and the second that adjusts, up or down, the voltage supplied from the DC removable power supply to the radio.
(Id. FH059086-87.) In distinguishing the Bohnstedt reference, Domes argued that:
The aforementioned Bohnstedt et al. reference, though disclosing a power supply that can be used to recharge the radio's batteries, does not include any power conversion circuitry for adjusting the DC output voltage of either the recharging unit 80 or the batteries 70-72. It is clear from Bohnstedt's disclosure that there is no disclosure or suggestion that battery packs of different voltages can be used to power the radio.
(Id. FH059088.) The Examiner issued a Notice of Allowability on June 28, 2001, allowing Domes' new claims. In doing so, the Examiner provided reasons for allowance. The Examiner first addressed the teachings of the prior art, explaining that:
although there is another portable radio battery charger recently patented (Smith-U.S. Patent number 6,215,276), its file date is later than applicant's file date and it does not have provisions for a removable DC power supply, nor the power conversion circuits for allowing various DC output voltages from the removable DC power supply.
(Id. FH059093.) The Examiner continued to discuss other teachings from the prior art. The Examiner concluded by stating that:
Thus, there are aspects of the applicant's invention that appear in all of the above inventions, but none in combination would meet applicant's claim limitation in total and would not be obvious to combine to produce applicant's invention. In particular, no combination AC powered radio/battery charger that containing [sic] a removable DC power supply with DC to DC converters producing various higher and lower voltage outputs than the DC output produced by the fixed-in enclosure AC powered DC output was neither found, suggested, nor made evident by the prior art.
(Id. FH059093.) Thereafter, the `059 patent issued.

  ANALYSIS

  I. The Agreed-Upon Terms

  The parties agree upon the construction for the term "power tool battery pack" in claim 6 of the `059 patent as "a battery comprised of one or more cells that can be used in a portable power tool." The Court adopts this agreed-upon construction as set forth in the parties' Final Joint Claim Construction Chart, filed on August 31, 2005. (R. 71-1.)

  II. The Disputed Terms

  The parties dispute the meaning of the following terms from the asserted patents: "radio," "radio receiver for receiving radio signals and generating audio output signals responsive thereto," "an AC powered DC power supply disposed in said enclosure for powering said radio and generating a first DC output voltage having a magnitude sufficient to power said radio," "a power conversion circuit," "first converter circuit for receiving," "power tool," "an automatic steering and isolation diode network for supplying voltage to said radio from either said AC powered DC power supply or said removable DC power supply, and also for automatically supplying charging voltage from said AC powered DC power supply to said removable DC power supply," "an AC powered DC charger for powering said radio and charging a removable DC voltage power source," "radio receiver means for receiving radio signals and generating electronic audio output signals responsive thereto," "ventilation opening," "first power source including an electrical cord engageable with an electrical outlet," "an adaptor," "charger," and "operating range."

  III. The Level Of Ordinary Skill In The Art

  The Court must construe the claims from the vantage point of a person of ordinary skill in the art. Phillips, 415 F.3d at 1313. The Court, therefore, must determine the level of ordinary skill in the art for purposes of this motion. At the Markman hearing, Black & Decker took the position that a person of ordinary skill in the art has an electrical engineering degree, or the equivalent through work in the field, and that also has worked with the construction or design of power tools within the construction industry. (Markman Transcript at 9:24-10:3.) Although it claimed to need further discovery on the issue, Bosch's counsel did not disagree with Black & Decker's proposed level of ordinary skill in the art, at least for purposes of claim construction. (Id. at 41:4-13.) Accordingly, for purposes of construing the claims, the Court adopts Black & Decker's proposal and finds that a person of ordinary skill in the art has an electrical engineering degree, or the equivalent through work in the field, and that also has worked with the construction or design of power tools within the construction industry.

  IV. "Radio"

  The Court first turns to the term "radio." This term appears in claim 1 of the `059 patent and claims 1 and 2 of the `925 patent.

  A. The Parties' Proposed Constructions

  Black & Decker proposes construing "radio" as "radio receiver and an audio output component." Bosch proposes that "radio" means "radio receiver and a loudspeaker device used to project audible sound."

  B. The Construction Of "Radio"

  The parties agree that the term "radio" includes a "radio receiver" plus at least one other component. The parties disagree on what that additional component must include. Bosch argues that in order to be a "radio," a "radio receiver" must be combined with "loudspeakers." The Court disagrees and finds that a person of ordinary skill in the art at the time of the invention, after having read the intrinsic record, would have understood the term "radio" to not require the presence of loudspeakers. The plain claim language does not mention loudspeakers or any similar component. Rather, the claim language merely requires that the "radio" is enclosed and that it includes a "radio receiver." Although the specification mentions "loudspeakers" it does not contain any language indicating that they are a required component of a radio.*fn4 It would be improper for the Court to incorporate the additional structure of loudspeakers into the plain claim language of "radio." Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1325 (Fed. Cir. 2001).

  The portions of the intrinsic and extrinsic record relied on by Bosch also support a construction of "radio" that does not require loudspeakers. Bosch relies on the declaration from its expert, Harvey A. Brodsky ("the Brodsky Declaration"). As Black & Decker points out, the Brodsky Declaration suffers from several deficiencies. First, it states its opinions of the understanding of one of ordinary skill in the art in the present tense. Federal Circuit law is clear that the Court is to construe the claims from the vantage point of a person of ordinary skill in the art at the time of the alleged invention, which in this case is around 1997. Phillips, 415 F.3d at 1313 (citing Innova, 381 F.3d at 1116). Next, the Brodsky Declaration does not provide that Mr. Brodsky ever reviewed the intrinsic record. Phillips, 415 F.3d at 1313 (citing Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)). Rather, the Brodsky Declaration contains conclusory unsupported opinions. See Phillips, 415 F.3d at 1318. Accordingly, the Court assigns this declaration very little probative value. Even if the Court did give weight to the Brodsky Declaration, his testimony confirms that a "radio" does not necessarily include loudspeakers. Referring to various possible components of a radio, Brodsky states that "[w]ithout any one of these circuits, the tuner circuit, the voltage regulator circuit, or the amplifier circuit, the radio device will not operate properly." (Brodsky Decl. ¶ 12.) Brodksy, therefore, concedes that even in the absence of one of these components, the device is still a "radio" device, even if he opines that it will not work properly. Accordingly, under Brodsky's opinion, even if given significant weight, a radio does not necessarily include loudspeakers.

  Bosch further relies on the specification, arguing that the "Summary of Invention" section states that one of the goals of the claimed invention is to overcome ambient noise present in construction sites. This stated objective, however, does not require that the "radio" limitation, itself, be capable of overcoming ambient noise. Rather, the claimed invention, comprised of all claimed components, should be capable of achieving this objective.*fn5

  Next, Bosch relies on U.S. Patent No. 6,427,070 (the `070 patent), filed on March 4, 1999, by a Black & Decker engineer, Roger Q. Smith. The `070 patent provides that "radio circuitry may include an FM Front End integrated circuit, ?, in combination with a low frequency power amplifier integrated circuit, ?." (R. 54-1;Ex. D, col. 3, ll. 63-67.) The `070 patent continues that "the radio circuitry may be replaced with other circuitry for producing audio signals to the speakers via circuitry used with a cassette deck, compact disk or other methods to play music." (Id. at col. 4, ll. 4-7.) The `070 patent is extrinsic evidence and the Court cannot use it to rebut a plain and ordinary meaning provided in the intrinsic evidence. Phillips, 415 F.3d at 1317. Even if the Court did rely on the `070 patent, the portions of the specification cited by Bosch do not require that a "radio" include loudspeakers. Most notably, the specification states that radio circuitry "may" be replaced with other circuitry for producing audio signals, and is therefore permissive. (R. 57-1; Ex. D., col. 3, ll. 54-60.) Accordingly, neither the intrinsic or extrinsic evidence of record supports incorporating a limitation of "loud speaker" into the plain language of the claims and the Court construes the term "radio" as a "radio receiver and an audio output component."

  V. "Radio receiver for receiving radio signals and generating audio output signals responsive thereto"

  The Court next turns to the term "radio receiver for receiving radio signals and generating audio output signals responsive thereto" from claim 1 of the `059 patent and claim 1 and claim 2 of the `925 patent.

  A. The Parties' Proposed Constructions

  Black & Decker proposes construing the term "radio receiver for receiving audio signals and generating audio output signals responsive thereto" as "a portion of the radio for receiving radio signals and converting the signals to audio output signals." Bosch argues that the term means "radio circuit board including at least a tuner circuit, having a voltage regulator, for receiving radio signals and an amplifier circuit for generating audio output signals responsive thereto."

  B. The Court's Construction

  Here, the language of the claims plainly defines the term "radio receiver." Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1299 (Fed. Cir. 2003) (finding that a patentee defined a term by how he used the term in the claims themselves). Because the "radio" includes the "radio receiver," the receiver is a portion of the radio. Further, the claim language specifies that the "radio receiver" receives radio signals and generates audio output signals responsive thereto.

  Bosch argues that the claimed "radio receiver" must include at least a tuner circuit, having a voltage regulator, for receiving radio signals and an amplifier circuit for generating audio output signals responsive thereto. Bosch, however, does not point to any part of the claim language requiring the structure of an "amplifier circuit" and a "voltage regulator" within the scope of the claimed "radio receiver." Instead, Bosch relies on extrinsic evidence. Extrinsic evidence, however, cannot trump the plain meaning of a term set forth in the intrinsic evidence. Phillips, 415 F.3d at 1317.

  Further, even if the Court relied on Bosch's extrinsic evidence, such evidence does not support a construction of the claimed "radio receiver" limited to having an amplifier and a voltage regulator. Bosh first relies on the Brodksy Declaration. As discussed above, however, the Court gives the Brodsky Declaration little weight.

  Bosch next argues that the `070 patent from a Black & Decker engineer confirms that a "radio receiver" necessarily includes an amplifier circuit and a voltage regulator. The `070 patent, however, actually evidences that a "radio receiver" is not limited as Bosch suggests. As Black & Decker points out, the `070 patent provides that "Amplifier 46 may also amplify signals received from an auxiliary input 13, allowing a user to play a separate cassette disk or compact disk player through the radio." (R. 57-1; Ex. D.) The fact that an amplifier can receive signals from a cassette disk or compact disk suggests that the amplifier does not necessarily have to be included with the radio receiver. Further, the `070 patent states:
Persons skilled in the art should recognize that the specific circuitry for each component is well known in the art. For example, the radio circuitry 44 may include an FM Front End integrated circuit, such as the Sanyo LA1186N used in a well-known manner, in combination with a low frequency power amplifier integrated circuit, such as the Toshiba TA8227P used in well-known manner.
(Id. at col. 3, ll.61-68.) This permissive language suggests that a radio receiver is not limited as Bosch proposes. Last, at the Markman hearing, Bosch introduced various dictionary definitions*fn6 of the term "radio receiver." The McGraw-Hill Dictionary of Scientific and Technical Terms (5th Edition) defines "radio receiver" as "a device that converts radio waves into intelligible sounds or other perceptible signals," but that definition goes on to state that a "radio receiver" is a "[a]lso known as radio." (Markman Hearing, Bosch Ex. 100.) Because the parties agree that the claim language requires that the terms "radio receiver" and "radio" have different scopes, this definition does not reflect the view of one of ordinary skill in the art after reviewing the intrinsic record. The Illustrated Dictionary of Electronics (1994) defines "radio receiver" as "[t]he complete apparatus that selects, demodulates, and reproduces a radio signal for purposes of communication ?." This dictionary, however, also defines "radio" as "2. Radio receiver," and therefore suffers from the safe defect as the McGraw-Hill definition. Further, the definition from the Illustrated Dictionary of Electronics, actually supports Black & Decker's proposed construction. Although that dictionary definition states that a "radio receiver" "selects, amplifies, demodulates, and reproduces a radio signal," the plain claim language of the asserted patents states a "radio receiver for receiving radio signals and generating audio output signals responsive thereto." It does not make sense that the inventor would specify two of the functions of a radio receiver (as set forth in the Illustrated Dictionary of Electronics), if he intended for all of those functions to necessarily be present in structures that were part of the claimed "radio receiver." Rather, the Court finds that one of ordinary skill in the art at the time of the invention would understand that the inventor was setting forth the requirements of the claimed "radio receiver" in the claim language itself. Accordingly, the Court construes the term "radio receiver for receiving radio signals and generating audio output signals responsive thereto" as "a portion of the radio for receiving radio signals and converting the signals to audio output signals."

  VI. "An AC powered DC power supply disposed in said enclosure for powering said radio and generating a first DC output voltage having a magnitude sufficient to power said radio"

  The Court next construes the term "an AC powered DC power supply disposed in said enclosure for powering said radio and generating a first DC output voltage having a magnitude sufficient ...


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