The opinion of the court was delivered by: Magistrate Judge Cole
MEMORANDUM OPINION AND ORDER
The defendants have moved for summary judgment on the issue of whether they infringed claim 12 of the patent-in-suit. Their motion focuses on the phrase, "approximately perpendicular," which refers to the angle of the threads inside the patented coupler. The defendants argue that all evidence shows that "approximately perpendicular" can mean no more than five degrees away from a ninety-degree angle. Because the threads of their device feature angles greater than that -- ten degrees away from a ninety-degree angle -- the defendants submit they are entitled to summary judgment. The plaintiff points out that the parties have already agreed that the phrase "approximately perpendicular" means "approximately ninety degrees," and eschewed a Markman hearing. As such, the time for claim construction has passed. Because the defendants are able to cite no law in support of what they are requesting, and because they did, in fact, propose the very claim construction the parties agreed upon, their motion is denied.
On September 4, 2007, Judge Coar set May 15, 2008, as the date for the Markman hearing in this case -- i.e., the date on which the claims of the patent-in-suit would be construed. Leading up to the hearing, the parties had a few other deadlines to meet:
Both parties shall exchange their respective versions of proposed terms and claim elements for construction in the form of jury instructions by 12/31/07. Both parties shall disclose any extrinsic evidence in support of their respective claim constructions by 2/12/2008, including dictionary definitions. Any modification to the proposed terms and claim elements for constructions shall be filed by 3/13/2008. Both parties shall file their memoranda in support of their respective versions of claim construction along with any exhibits to be offered during the Markman hearing and a list of witnesses who will be called to testify at the hearing by 4/14/2008. [Dkt. # 79].
Apparently, however, the only thing the parties actually did was exchange their proposed terms and claim elements for construction. The day before the Markman hearing, counsel for plaintiff filed a letter with the court in which he wrote that "there appear[ed] to be no need for the Markman hearing . . . and . . . respectfully suggest[ed] that it not be held." [Dkt. # 104]. Counsel went on to explain that, while the parties' proposed constructions were worded differently, they were virtually identical in scope and substance. [Dkt. # 104]. He indicated that he and his opponent thought they should meet with the judge in chambers and resolve any wording differences. [Dkt. # 104]. Taking the parties at their word, Judge Coar cancelled the Markman hearing that same day, and stated that the agreed upon claim constructions would be finalized in jury instructions at the final pretrial conference.
Of course, there hasn't been a final pretrial conference yet, but the parties agree as to the construction of claim 12, which is the subject of the defendants' current motion for summary judgment. (Plaintiff's Response [Dkt. # 346], at 5-6; Defendants' Reply [Dkt. # 347], at 8). Defendants' proposed jury instruction on that claim -- the wording of which plaintiff accepts -- is that "the phrase 'the rear face disposed approximately perpendicular to a longitudinal axis through the base of the first thread' means the surface of each tooth facing away from the first end of the first connector is at an approximately ninety degree angle to the base of the tooth." (Plaintiff's Response [Dkt. # 346], Ex. B, ¶ 37; Defendants' Reply [Dkt. # 347], at 8). Notably, plaintiff, too, used the same "approximately ninety degree" language in his proposed instruction. (Plaintiff's Response [Dkt. # 346], Ex. C).
Now, the defendants have moved for summary judgment that they have not infringed claim
12. Essentially, they base their argument on evidence that "approximately ninety degrees" must be limited to no further than five degrees from perpendicular and evidence that their coupler's threads are at eighty degrees -- or ten degrees off perpendicular. But it is a tardy argument that confuses the phase of the case where the claim is construed -- which defendants agree is over -- with the phase of the case where the issue of infringement is resolved by the trier of fact.*fn1 Moreover, even if defendants were in the right phase of the case at the right time, their evidence -- most notably the testimony of the plaintiff and a snippet of prosecution history -- would not entitle them to summary judgment on the issue of claim construction. As it stands, this is nothing more than a back-door attempt to have a Markman hearing that the defendants already agreed was unnecessary and renege on their agreement as to the construction of claim 12 and its accompanying jury instruction. The motion must be denied.
There are two steps in an infringement analysis. The first entails
determining the meaning and scope of the patent claims asserted to be
infringed, while the second entails comparing the properly construed
claims to the device accused of infringing. Markman v. Westview
Inc., 517 U.S. 370, 384 (1996); Markman v. Westview Instruments, Inc.,
52 F.3d 967, 976 (Fed.Cir. 1995). Claim construction in this case is,
according to both sides, over. That is what the defendants led Judge
Coar to believe, in any event. Yet, the defendants' motion is
inundated with contentions regarding the meaning of claim 12's phrase
"approximately perpendicular" -- which, as even the defendants point
out, the parties have agreed, for better or worse, is "approximately
90 degrees." (Defendant's Reply [Dkt. # 347], at 8).*fn2
Over and over again throughout their submissions, defendants
talk about the "meaning" of the claim or the "construction" of the
In construing the term "approximately perpendicular" the court may consider "extrinsic" evidence . . . (Defendants' Memorandum [Dkt. # 332], at 2 (emphasis supplied));
In this case, [plaintiff] -- the inventor of the '726 patent -- has offered testimony concerning the established meaning of the term "approximately perpendicular." (Defendants' Memorandum [Dkt. # 332], at 2 (emphasis supplied));
Plaintiff's understanding in this regard -- i.e., a 3-degree angle for the rear face of the thread -- does not support a construction that "approximately perpendicular" includes a 10-degree angle. (Defendants' Memorandum [Dkt. # 332], at 6 (emphasis supplied));
Plaintiff's acquiescence in this regard has legal consequence and may be relied on by the Court in construing the claim term "approximately perpendicular." (Defendants' Memorandum [Dkt. # 332], at 7 (emphasis supplied)). "Construction" and "meaning": that's the stuff of Markman hearings -- something defendants preferred not to have.
All of the cases the defendants have compiled to support their motion for summary judgment deal with claim construction, not infringement. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 983 (Fed.Cir. 1995)(explaining claim construction at length); Howmedica Osteonics Corp. v. Wright Medical Technology, Inc., 540 F.3d 1337, 1347 n.5 (Fed.Cir. 2008)("The testimony of an inventor, of course, may be pertinent as a form of expert testimony, for example, as to understanding the established meaning of particular terms in the relevant art."(emphasis supplied)); Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 886 (Fed.Cir. 2008)("'. . . prosecution history can often inform the meaning of the claim language . . .'" (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005)) (emphasis supplied)); Ormco Corp. v. Align Technology, Inc., 498 F.3d 1307, 1314 (Fed.Cir. 2007)(" . . . we turn to the prosecution history of the Ormco patents, and other patents from the same family, to determine if there are statements there that should further inform our construction of the claims." (emphasis supplied)); ICU Medical, Inc. v. RyMed Technologies, Inc., 673 F.Supp.2d 228, 231, 2009 WL 4496023, *1 (D.Del. 2009)("A court may consider extrinsic evidence, including expert and inventor testimony, dictionaries, and learned treatises, in order to assist it in understanding the underlying technology, the meaning of terms to one skilled in the art and how the invention works." (emphasis supplied)); ...