The opinion of the court was delivered by: Judge Blanche M. Manning
John W. Von Holdt, Janice Anderson, and Plas-Tool Company (collectively, "the plaintiffs") allege that A-1 Tool Corporation, Triangle Tool Corporation, Alfonso Arciniegas, Geoffrey Luther, and LeRoy Luther (collectively, "the defendants"), among other things, infringed U.S. Patent No. 4,512,493 ("the '493 patent"), which is entitled "Molded Bucket And Lid Having High Stack Strength." The parties requested a claim construction hearing pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996) ("Markman hearing"), which this court referred to the magistrate judge. On May 22, 2008, Magistrate Judge Brown conducted the Markman hearing, and subsequently issued a report and recommendation on the construction of the claims in dispute, see Report and Recommendation, No. 04-C-5622 (N.D. Ill. Nov. 20, 2008)("R&R"). The defendants timely objected to the R&R pursuant to 28 U.S.C. § 636(b)(1) and Fed. R. Civ. P. 72. Those objections are now before the court.
The '493 patent is entitled "Molded Bucket And Lid Having High Stack Strength." The purpose of the design is to establish "exceptional stacking strength so that even though the bucket is made of plastic material, large, heavy, filled buckets of the design of this invention can be stacked twelve or thirteen high without distortion or collapse of the lowest bucket in the stack." '493 Patent at Col. 1:26-32. The claims currently at issue in the '493 patent, Claims 5, 6, and 7, involve the transition area from the bottom to the sidewall of the bucket, and the ribs that are on the bottom of the bucket to provide strength. Tr. at 7-9, Def. Appx. Exh. 7. Those claims are as follows, with the terms in bold being the subject of the defendants' objections to the R&R:
5. A molded bucket comprising: a tapered sidewall defining the sides of the bucket and forming an open mouth having an annular projection at said mouth; an integral bottom coupled to said sidewall at a transitional area; said transitional area being molded with a relatively large radius and having a thickness approximately equal to the thickness of said bottom; said radius and thickness preventing stress concentration from weakening the bucket; wherein said transitional area curves upward longitudinally to said sidewall, an annular sidewall continuously extending around said bottom in alignment with said sidewall, said annular wall having a bottom edge forming a lower support surface projecting beyond the bottom surface of said bucket; and a plurality of ribs arranged around the bucket and extending between said annular wall and the radial outer portion of said bottom.
6. The molded bucket according to claim 5 wherein said ribs are arranged in a diagonal orientation forming side-by-side generally V-shaped ribs.
7. The molded bucket according to claim 5 further including radial ribs. '493 Patent at Cols. 6:62 -- 7:19 (emphasis added).
The defendants contend that the magistrate judge's determinations must be reviewed de novo. Goss Int'l Americas, Inc. v. Graphic Mgmt. Assoc., Inc., No. 05-C-5622, 2008 WL 2410426, at *1 (N.D. Ill. Jun. 11, 2008). Under Fed. R. Civ. P. 72, the determination of whether this court performs its review under a clear error or de novo standard is based on whether the issue decided is dispositive. This case was referred to the magistrate judge to conduct a Markman hearing under 28 U.S.C. § 636(b)(3), which allows the magistrate judge to perform "such additional duties as are not inconsistent with the Constitution and laws of the United States." The magistrate judge interpreted this reference to require the issuance of a R&R pursuant to § 636(b)(1)(B), objections to which require de novo review by this Court.
Given the fact that claim construction is likely dispositive of the plaintiffs' claims of infringement, this Court will review the magistrate judge's R&R de novo. See 12 Fed. Prac. & Proc. Civ. 2d § 3068.2 ("Rule 72 is thus in keeping with the legislative intent [of 28 U.S.C. § 636]: at the very least, the eight motions listed in the statute will be governed by the procedures and de novo review of Rule 72(b),and these procedures should also apply to any other pretrial matters or other 'additional duties' that, in a particular case, may be 'dispositive of a claim or defense of a party.'"). See also Shuffle Master v. Vendingdata, No. 2:04-CV-01373-BES-LRL, 2007 WL 674290, at *1 (D. Nev. Feb. 28, 2007)(noting that the court was compelled to review de novo the magistrate judge's R&R on a Markmanhearing pursuant to 28 U.S.C. § 636(b) and that "[t]his standard is consistent with that which is applied in the [de novo] review of claim constructions made pursuant to [the Markman decision]")(citations omitted).
The defendants' objections can be separated into two separate categories. First, the defendants claim that the court did not construe, but should have, two disputed terms: "molded bucket" and "side-by-side." The second category of objections are those which challenge the magistrate judge's construction of three terms: "a relatively large radius," "in alignment," and "generally V-shaped ribs." The court will address these two categories of objections in turn.
A. Should the Magistrate Judge have Construed the Terms "Molded Bucket" and "Side-by-Side?"
1. "[M]olded bucket" of Claim 5
Claim 5 includes the term "molded bucket." The defendants argue that the magistrate judge erred in failing to construe the term "molded bucket," and ask this court to do so. Specifically, the defendants ask this court to reject the plaintiffs' contention that the term "molded bucket" includes the mold used to make the bucket.
Before the magistrate judge, the plaintiffs initially contended that the patent covered buckets as well as molds. Pls.' Claim Chart at 2, Dkt #413. However, the plaintiffs subsequently agreed that the issue of whether the patent covers molds to make buckets, as well as buckets, was not an issue of claim construction but rather an issue of applying the claims to a product. Tr. at 59-60, Def. Appx. Exh. 7. At the hearing, the magistrate judge did not construe the term "molded bucket" apart from its ordinary meaning, stating, "I'm going to find as a matter of claim construction that both parties agree that the term 'molded bucket' means a molded bucket." Tr. at 71:19-21, Def. Appx. Exh. 7.
"It is well settled that claims may not be construed by reference to the accused device." Neomagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062, 1074 (Fed. Cir. 2002). See also Info. Tech. Innovation, LLC v. Motorola, Inc., 391 F. Supp. 2d 719, 730-31 (Fed. Cir. 2005). Moreover, a court does not fail to discharge its duty under Markman when a term does not require construction or does not depart from its ordinary meaning. Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001)(discussing that the district court did not fail to discharge its duty when it declined to construe "melting" because the term did not require construction nor did it depart from its ordinary meaning, and the issue in dispute was the application of the melting step in the accused process, a factual question of infringement).
In this case, there is no dispute as to the ordinary meaning of the term "molded bucket." The plaintiffs conceded that a "molded bucket" means a molded bucket. Tr. at 70-71, Def. Appx. Exh. 7. To impose exclusions on the term "molded bucket," such as excluding molds, would be construing the terms in reference to the accused device. See Neomagic Corp., 287 F.3d at 1073-76 (determining that the district court erred by examining the accused device before it construed the term "power supply" to mean that it must supply a constant voltage, which would exclude the accused device).
It is an issue for claim infringement whether or not the term "molded bucket" in Claim 5 can apply to bucket molds that could make potentially infringing buckets. See Info. Tech., 391 F. Supp. 2d at 730-31 (where parties agreed on the ordinary meaning of the term "dynamic model" but the defendants wished to insert an exclusion to show that there was a distinction between the model itself and the data files that go into the model, determining that the defendants' exclusion was unnecessary and an issue for infringement, not claim construction). Therefore, the court concludes the meaning of the term "molded bucket" does not depart from its ordinary meaning and does not require further construction.
2. "[S]ide-by-Side" of Claim 6
The defendants concede "side-by-side" means "one beside the other." Defendants' Objections at 4, 6. However, the defendants argue that the R&R ignored the dispute as to whether there can be "side-by-side" ribs that have an additional rib in between them. Id. at 4. The defendants contend that the magistrate judge erred by not construing the term and request that the court construct "side-by-side" to mean that nothing can be in between the generally V-shaped ribs. Id. at 4, 6. The R&R states that both parties agree "side-by-side" means "one beside the other." R&R at 18. Therefore, the magistrate judge determined that there is nothing about the term requiring interpretation as a matter of law. Id.
Claim 6, at issue here, states that: "The molded bucket according to claim 5 wherein said ribs are arranged in a diagonal orientation forming side-by-side generally V-shaped ribs." The defendants assert essentially that the magistrate judge should have construed the term "side-by-side" in Claim 6 to mean that the ribs must abut with nothing in between. But, as noted above, there is no dispute as to the ordinary meaning of the phrase "side-by-side" and the court does not fail to discharge its duty under Markman when a term does not require construction or does not depart from its ordinary meaning. Biotec, 249 F.3d at 1349. Thus, the court agrees with the magistrate judge's conclusion not to construe the term as asserted by the defendants.
This is particularly true because to impose the construction that "side-by-side" ribs cannot have intervening radial ribs would be imposing a limitation on the claims not supported in ...