The opinion of the court was delivered by: Amy J. St. Eve, District Court Judge:
MEMORANDUM OPINION AND ORDER
The parties in this patent infringement case dispute the construction of nine claim terms in the patent-in-suit. After reviewing the parties' respective submissions and conducting a Markman hearing on August 28, 2012, see Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996), the Court construes the disputed claim terms as set forth below.
Sloan filed this lawsuit on January 13, 2010, alleging that Zurn had appropriated its "dual mode flush valve invention," therefore infringing U.S. Patent No. 7,607,635, entitled "Flush Valve Handle Assembly Providing Dual Mode Operation" (the "'635 Patent") and the corresponding U.S. Patent Application Publication No. 2006/0151729 (the "Patent Application Publication").*fn1 (R. 1.) Zurn subsequently asserted several counterclaims and affirmative defenses. (R. 72, 85.)
On December 16, 2010, upon Zurn's motion, the Court stayed the proceedings because the U.S. Patent and Trademark Office ("PTO") had granted Zurn's request for an ex parte reexamination of the '635 Patent. (R. 149, 157.) On September 27, 2011, the PTO issued an Ex Parte Reexamination Certificate for the '635 Patent, in which certain of Sloan's claims in were amended and others were added, as discussed in more detail below. (R. 184-1, Reexam. Cert.) On November 10, 2011, the Court granted Sloan's motion to re-open the case and lift the stay. (R. 183, 192.)
On November 29, 2011, Sloan filed its Amended and Supplemental Complaint, asserting direct and willful infringement of claims 1, 4-6, 10-12, 14, 19, 29-31, and 33-34 of the '635 Patent, infringement of the Patent Application Publication, induced infringement of the '635 Patent, and contributory infringement of the '635 Patent. (R. 197.) On December 9, 2011, Zurn filed its Answer, Counterclaims, and Affirmative Defenses to Sloan's Complaint, in which Zurn asserts several counterclaims. (R. 202, 207.)
The '635 Patent "relates to flush valves for use with plumbing fixtures such as toilets, and more specifically to improvements in the bushing of the actuating handle assembly that will provide for user-selectable, dual mode operation of the flush valve." (R. 314-1, '635 Patent, col. 1, ll. 6-10.) The improvement is a mechanism that allows a user to select one of two flush volumes based on the direction of actuation of the handle: a full flush volume to evacuate solid waste from the bowl or a reduced flush volume to remove liquid waste. (Id., col. 1, ll. 11-19, col. 2, ll. 27-33.)
Cross-sectional representations of the preferred embodiment of the invention are reproduced below for reference. These figures show the handle (38), bushing (66), and plunger shank (80). Figure 5 represents a full flush volume, and Figure 6 represents a reduced-volume flush. (See id., col. 3, ll. 15-20.)
As depicted in Figure 5, in the full flush mode, the user pushes the handle (38) down, which causes the plunger shank (80) to slide along the horizontal main axis (A) and hit the relief valve stem at a location (108) that results in a full flush volume. (See id., col. 5, ll. 9-19.) As shown in Figure 6, in the reduced-volume flush mode, the user pulls the handle up, which causes the plunger shank (80)to tilt and slide along an angled axis (B), as compared to the horizontal axis, and hit the relief valve stem at a lower contact point (110). This results in a reduced opening of the relief valve, and thus a reduced volume of water.(See id., col. 5, ll. 19-34.)
Claim 1 is representative of the "dual mode flush valve" claims. It recites: A dual mode flush valve, comprising a body having an inlet and an outlet, a valve seat between said inlet and outlet, a valve member movable to a closing position on said valve seat to control water flow between said inlet and outlet, a pressure chamber defined in said body above said valve member, a relief valve mounted on the valve member for movement between seated and unseated positions which close and open the pressure chamber, respectively, a handle assembly mounted on the body and including an actuatable handle, a bushing having a passage defined therethrough and a plunger slidably and tiltably mounted in said bushing passage, the plunger having an outer end in the engagement with the handle and an inner end engagable with the relief valve, the plunger being movable to unseat the relief valve, the bushing passage defining both a first axis of plunger travel and a second axis of plunger travel which is angled with respect to the first axis of plunger travel, wherein tilting of the handle in a first direction moves the plunger along the first axis of plunger travel providing a first flush volume of water adequate to evacuate solid waste and tilting of the handle in a second direction tilts the plunger and moves the plunger along the second axis of the plunger travel providing a second flush volume of wateradequate to evacuate liquid waste. (Reexam. Cert., col. 1, ll. 31-54.) Claim 12 is representative of the "system for operating a water flush valve" claims. It recites as follows:
A system for operating a water flush valve in a plurality of user selectable flush volume modes including a liquid waste removal mode and a solid waste removal mode, comprising a user handle operable in at least a first and second direction to cause a face plate to pivot about a plurality of portions of the face plate; and the face plate of the system coupled to the user handle and constructed to respond to handle motion by at least the following: (1) motion in a first handle direction of the user handle causing the face plate to pivot about a first face plate portion of the face plate moving in a first face plate direction and a coupled lower portion of a plunger head and coupled shank remaining substantially centered on a horizontal axis of travel such that an end view of the shank remains substantially centered on the horizontal axis of travel, thereby releasing a first flush volume of water for solid waste flushing purposes in the solid waste removal mode and (2) motion in a second handle direction of the user handle causing the face plate to pivot about a second face plate portion of the face plate moving in a second face plate direction and a coupled upper portion of the plunger head and the coupled shank displaced away from a center of the horizontal axis of travel such that an end view of the shank is displaced from the horizontal axis of travel, thereby releasing a second flush volume of water adequate for liquid waste flushing purposes in the liquid waste removal mode. (Id., col. 1, l. 56 through col. 2, l. 13.)
III. Prosecution and Reexamination History of the '635 Patent
Sloan filed its application for the '635 Patent on August 25, 2005. (R. 314-1 at JA0001.) The '635 Patent lists John R. Wilson as the inventor and Sloan as the assignee.*fn2 (Id.; R. 314-2 at JA0198.) The application contained 14 claims, with independent claims 1, 7, 10 and 12. (R. 314-3 at JA0212-32.) On April 7, 2006, Sloan filed a preliminary amendment, which, among other things, added new claims 15-31. (Id. at JA0182-92). In an Office Action mailed on February 18, 2009, the examiner rejected claims 2, 3, 16, 21-25, and 30, which referred to a "first bore" and a "second bore" in describing the bushing passage, as indefinite under 35 U.S.C. § 112. (Id. at JA0133.) The examiner noted that it was "unclear . . . how the first and second bore can be two different bores since it appears that the plunger passes through only a single bore," and further explained that "[d]escribing a single bore as multiple bores renders the claims indefinite." (Id.) In addition, the examiner also indicated that he would allow claims 16 and 30 if Sloan rewrote them to overcome the rejection under 35 U.S.C. § 112. (Id. at JA0134.) Sloan replied on April 22, 2009, in which it added claims 35-41 and, among other things, amended claims 2, 3, 16, 21-25, 29, and 30 to "clarify the description of the passage by removing the term 'bore.'" (R. 314-1 at JA0100.) Sloan represented that it made the amendments to "overcome the § 112 rejection." (Id. at JA0100-01.) The '635 Patent issued on October 27, 2009. (Id. at JA0001.)
On September 17, 2010, Zurn filed a request for ex parte reexamination of claims 1, 4-12, 14, 18, 19, 28-31, 33 and 34 of the '635 Patent, alleging that a substantial new question of patentability existed. (R. 314-13 at JA0936-1033.) In particular, Zurn requested reexamination of the '635 Patent in view of the following prior art: U.S. Patent No. 3,279,742 ("Billeter"); U.S. Patent Application No. 2006/0033060 ("Funari"), ASME A112.19.14-2001, and U.S. Patent No. 4,134,570 ("Walker"). (Id. at JA0937.) The examiner granted Zurn's request. (R. 314-12 at JA0871-880; R. 314-11 at JA0734.)
In an Office Action mailed on January 10, 2011, the examiner rejected claims 1, 5, 7, 8, 12, 14, 18, 19, and 31 and confirmed the patentability of claims 4, 6, 9, 28-30, and 34. (R. 314-11at JA0733-62.) Specifically, the examiner rejected claims 1, 5, 7, 8, 12, and 14 under 35 U.S.C. § 102(b) as anticipated by Billeter. (Id. at JA0739-42.) The examiner also rejected claims 18, 19, and 31 under 35 U.S.C. § 102(b) as anticipated by Billeter, or, in the alternative, as obvious under 35 U.S.C. § 103(a) over Billeter. (Id. at JA0742-43.) Finally, the examiner rejected claims 1, 5, 7, 8, 12, 14, 18, 19, and 31 under 35 U.S.C. § 103(a) as obvious over Billeter in view of Walker. (Id. at JA0743-49.) The examiner interpreted Billeter as "inherently a dual mode flush valve." (See id. at JA0740-42; JA0745-48.) The examiner also interpreted Walker as disclosing "a flush valve with a screw  to limit the motion of the handle  which results in a lower flush volume." (Id. at JA0745-46, 0749.)
During an interview with the examiner on March 31, 2011, the examiner "expressed that [claim 1] may benefit from additional language to clarify that the claimed structure is related to the dual mode concept set forth in the preamble." (R. 314-5 at JA0386.) Sloan, in a Supplemental Amendment and Reply filed on April 8, 2011, amended claim 1 to "explicitly recite language linking the first and second axes of plunger travel to a first flush volume and second flush volume, respectively." (Id.) Sloan further stated that "it would be understood that the first flush volume and second flush volume are sufficiently different so as to effectuate dual flush modes, that is a dual flush mode wherein one flush mode provides a flush volume adequate for liquid evacuation and another flush mode provides a flush volume of greater volume adequate for solid (or liquid) evacuation." (Id.)
Sloan further responded to the examiner's rejections on April 7, 2011, amending claims 12 and 18 to include language directed to "user selectable flush volume modes" and designating "a first flush volume" relating to removal of solid waste and "a second flush volume" relating to removal of liquid waste. (R. 314-5 at JA0392-422.) Sloan also proposed new claims 36-46. (Id. at JA0394-97.) In responding to the Billeter reference, Sloan stated that "Billeter discloses only a conventional single mode flush valve," whereas a person of ordinary skill in the art "would understand a 'dual mode flush valve' to be one that permits a user deliberately to select between two distinct modes of flushing a fixture, either a reduced flush volume mode for evacuating liquid waste or a full flush volume mode for both solid and liquid waste." (Id. at JA0401 (emphasis in original).) Further, Sloan stated that in a dual mode flush system, "selection of one of the flush modes results in a flush volume of water being flushed that may vary about the selected flush volume due to tolerances and variances in the flush valve and the fixture (as noted below, such is contemplated by the relevant ASME standards)." (Id.) In addition, Sloan provided that the "reduced flush volume is insufficient to effectively evacuate solid waste but provides water savings over a single flush mode designed to reliably provide sufficient water to evaluate solid waste (and thus wasting substantial water when only liquid waste removal is needed)." (Id.) Sloan concluded that "one of ordinary skill in the art would understand the term 'dual mode' in regard to flush valves to correspond to the above description," referencing Sloan's statements above. (Id.)
In response to the examiner's concerns, Sloan also submitted a declaration from Mr. Julius Ballanco (the "Reexamination Declaration"). In his Reexamination Declaration, Mr. Ballanco concluded that "a dual mode flush means: having a user selectable specific full flush volume for removing solid and liquid waste from the water closet and a specific lower flush volume that is used to remove the liquid waste." (Id. at JA0479.) Mr. Ballanco discussed Billeter, stating that it "does not describe any large tolerances between the diameter of the plunger  and the diameter of the handle bushing ," and that "movement of the plunger in [Billeter] produces a single flush volume and certainly is not intended to provide a dual mode flush valve." (Id. at JA0481.) The Reexamination Declaration further characterized Billeter as producing "a single flush volume when the handle was operated in either the down or up orientation" which means that "a dual mode flush was not an inherent part of [Billeter]." (Id. at JA0483.) Mr. Ballanco's Declaration also discussed industry standards for various flush volumes. (Id. at JA0476-79.)
The PTO mailed a Notice of Intent to Issue Ex Parte Reexamination Certificate on July 22, 2011. (R. 314-3 at JA0249-59.) In the "Statement of Reasons for Patentability and/or Confirmation," the examiner found that the amendment to the claims adding "that the first and second flush volumes were for removing solid waste and liquid waste" is a claim limitation which "give[s] the preamble breath and life." (Id. at JA0253.) Thus, the examiner concluded that the "dual mode" claim term has patentable weight. (Id.) The examiner observed that the 2003 ASME Dual Flush Devices for Water Closets defines dual flush as "a mechanism which allows a full volume or a reduced volume," and that it provides that the "reduced volume" is a 30% reduction in the water volume. (Id.; see also R. 314-8 at JA0545-58, 2003 ASME Dual Flush Devices for Water Closets, A112.19.10-2003.) Additionally, the examiner stated that the inherent flush volume differentials in the Billeter reference do not meet the definition of a dual mode flush valve. (Id.)
In addition, the examiner found claims 1, 12, 18 and 36 patentable over Billeter and Walker due to the requirement that the claimed invention's plunger is "able to move in a horizontal axis of travel for one flush mode (full volume)" and is "tiltable for the other flush volume (reduced volume)." (R. 314-3 at JA0253-54.) The examiner also found the claimed invention patentable over Funari, Billeter, and Walker based on the fact that it has "at least one axis of plunger travel and the second axis of plunger travel" and a "plunger [that] is tiltable." (Id. at JA0254.) In addressing the bushing passage, the examiner stated that "Billeter does not disclose the first opening including extension portions joining the upper and lower arcuate portions," and further stated that "a circular opening includes an upper and a lower arcuate portion, but does not include a pair of extensions." (Id. at JA0256-57.) The PTO issued an Ex Parte Reexamination Certificate on September 27, 2011. (Id. at JA0240.)
The parties dispute nine claim terms of the '635 Patent.*fn3
For convenience, the parties' respective proposal as to each
term is set forth in the following chart.
Claim Term or Sloan's Proposed Construction Zurn's Proposed
Construction Phrase "dual mode flush A water conservation valve that A
flush valve that can be operated in valve"*fn4 permits
a user deliberately to at least two different ways to release select
between two distinct modes two different volumes of water. of flushing
a fixture: either a reduced flush volume mode adequate to evacuate
liquid waste or a full flush volume mode adequate to evacuate solid
The reduced flush volume must be at least about a 30% reduction in water volume when compared to the full flush volume. A valve that produces minor variations from flush to flush within the industry standard of plus or minus 10% from a specified flush volume is not a dual mode flush valve. "a first flush Two volumes of water that are A first volume of water that differs volume of water sufficiently different so as to from a second volume of water . . . and . . . a effectual dual flush modes. measured upon actuation of the second flush flush valve handle. volume of water"*fn5
Claim Term or Sloan's Proposed Construction Zurn's Proposed
Construction Phrase "plunger mounted The plunger is positioned so that
it Mounted so the plunger moves for sliding and is capable of sliding
and slanting along an axis of plunger travel that tilting"*fn6
to an angle sufficient to cause a is at an angle to a
horizontal axis. difference of at least about 30% in flush volumes.
"tilting the inner Causing the plunger shank to slant Moving the
plunger so that it travels end of the to an angle sufficient to create
a along a plunger travel axis that is at plunger"*fn7
difference of at least about 30% in an angle to another
plunger travel flush volumes. axis (e.g. a horizontal axis). "axis of
plunger The bushing passage defining both A straight line upon which
the travel" an imaginary line through the plunger travels that is
coincident center of a first bore of the with the longitudinal axis of
the --or-- bushing passage and an imaginary plunger. line through the
center of a "bushing passage second, partially overlapping bore
defining both a of the bushing passage, which first axis of imaginary
line is angled with plunger travel respect to the first axis. and a
second axis of plunger travel which is angled with respect to the
first axis of plunger travel"*fn8
Claim Term or Sloan's Proposed Construction Zurn's Proposed Construction Phrase "displaced away That viewed when facing the end Moving the plunger along a plunger from a center of of the plunger shank, the end of travel axis that is at an angle to the the horizontal the plunger shank is not horizontal axis of travel. axis of travel substantially centered on the such that an end imaginary line through the center view of the shank of the horizontal bore of the is displaced from bushing passage. the horizontal axis of travel" "tilted portion" A portion of the bushing passage A portion of the bushing configured (of the bushing with a slanted wall that allows the so that the plunger moves along an passage)*fn9 plunger to tilt. angled axis of plunger travel. "arcuate portion" A portion of the wall of the A portion of a circle. opening that is curved like a bow. "extension Portions of the wall opening that Segments that connect two ends of portions" extend from and join an end of the the upper arcuate portion with the upper arcuate portion to and end lower arcuate portion that are not of the lower arcuate portion. part of the upper or lower circle.
On August 28, 2012, the Court conducted a Markman hearing. During the hearing, Sloan's expert, Mr. Julius Ballanco, presented a tutorial on how flush valves work. In addition, Mr. Ballanco testified about the industry standards that are at issue in this case. Zurn's expert, Mr. Tsan-Liang Su, also testified. He, too, gave a brief tutorial on how flush valves work, and he testified about the applicable industry standards. The parties then proceeded with their respective arguments in support of their proposed constructions.
Because the claims of a patent define the invention, claim construction-the process of giving meaning to the claim language-defines the scope of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) ("It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to which the patentee is entitled the right to exclude.'") (citation omitted). Claim construction is a matter of law for the court to determine. Markman, 517 U.S. at 391; Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1357-58 (Fed. Cir. 2012). The Court begins its claim construction analysis with the words of the claims themselves, giving those words 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; see also InterDigital Comm'cns, LLC v. Int'l Trade Comm'n, - F.3d -, 2012 WL 3104597, at *5 (Fed. Cir. Aug. 1, 2012).
The Federal Circuit teaches that the Court is to focus on the intrinsic record in construing claims, stating "[i]mportantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313; see also HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1275 (Fed. Cir. 2012) (stating that the district court "should have referred to the specification to understand the claims") (citing Phillips, 415 F.3d at 1315). In construing a disputed claim term, courts also look to the prosecution ...