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National Steel Car Ltd. v. FreightCar America, Inc.

United States District Court, N.D. Illinois, Eastern Division

June 8, 2017

National Steel Car Limited, Plaintiff,
FreightCar America, Inc., Defendant.



         Plaintiff National Steel Car Limited, Inc. sued defendant FreightCar America, Inc. for patent infringement. The asserted patents are U.S. Patent No. 7, 434, 519; U.S. Patent No. 7, 461, 600; U.S. Patent No. 7, 775, 611; U.S. Patent No. 7, 878, 125; and U.S. Patent No. 8, 025, 014. The asserted claims concern the structure of more efficient, lighter gondola railcars, with certain features. Currently at issue is claim construction: determining the meaning of certain words and phrases in the patents' claims.

         I. Legal Standards

         Claim construction is a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996); Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1358 (Fed. Cir. 2012). “A basic principle of claim construction is that the words of a claim are generally given their ordinary and customary meaning.” Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d 1291, 1299 (Fed. Cir. 2014) (internal quotation marks omitted) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). The ordinary meaning 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. The person of ordinary skill is assumed to read the claim terms in the context of the entire patent, including the specification and the prosecution history. Id.; SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1195 (Fed. Cir. 2013).

         A term will not be given its ordinary meaning if the patent applicants intended to give the term a special definition or disclaim its ordinary scope. Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365-66 (Fed. Cir. 2012). There is “a heavy presumption that claim terms carry their full ordinary and customary meaning, ” rebutted only if the applicants “unequivocally imparted a novel meaning to those terms or expressly relinquished claim scope during prosecution.” Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); see also Thorner, 669 F.3d at 1366-67 (a “clear and unmistakable disclaimer” is required to meet this “exacting standard”). The scope of a prosecution disclaimer depends on the nature of the argument made by the applicants to the patent office during prosecution. Cordis Corp. v. Medtronic AVE, Inc., 511 F.3d 1157, 1177 (Fed. Cir. 2008). A disclaimer during prosecution of one patent can affect terms in a related patent if either (1) the disclaimer pertained to a common phrase; or (2) the disclaimer pertained to the common invention as a whole, regardless of the specific words used to claim it. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1346-50 (Fed. Cir. 2004).

         II. Analysis

         National Steel Car, a railroad freight car manufacturer, is the owner of the five asserted patents in this case. The patents describe open-topped gondola railcars, generally made of steel, that transport coal and other cargo across the country. A typical gondola car design is reproduced below:

         (IMAGE OMITTED)

         The key features in this type of design include the four sidewalls, stiffeners that help support the sidewall, and the floor structure. The floor rests atop a cross-bearer-a piece of metal stretching across the bottom of the car. In each of the patents, the sidewalls stand directly on the floor, rather than extending past the floor and connecting to an underframe.

         In basic engineering terms, a beam, such as an I-beam, provides support for load-bearing structures. The two components of a beam are referred to as the web and the flange, and in a generic I-beam, those components are identified in the following cross-section diagram:

         (IMAGE OMITTED)

         In this diagram, the flanges are the horizontal pieces of the beam, connected by a vertical web.[1] The parties dispute the meaning of “web” and “flange” in the patents at issue. For background purposes, it suffices to say that in the patented railroad car, the floor serves as the top flange of the cross-bearer as well as the bottom flange of the sidewalls, enabling the construction of lighter and stronger railcars.

         The cars also have gates, known as “cleanout gates” or “cleanout ports, ” which latch in place and can be easily opened and closed to facilitate the moving of material in and out of the car.

         A. “Defining, ” “defined”

         The patents use the words “defining” and “defined” in recurring phrases like the following: “said floor and said wall structure defining a lading receptacle.” [79] at 66-7 and 329-30.[2] Elsewhere, the '519 patent mentions “said side beams defining portions of said wall structure.” Id. at 65. Terms with the root “define” are generally used in the patents in reference to the shape of the lading receptacle.

         NSC proposes that the terms “defining” and “define[d]” be construed to mean “delineating/delineate[d] the outline or form of.” This is the term's meaning according to Webster's dictionary. FCA proposes the construction “delineating/delineate[d] the boundaries of, ” which it intends to mean something like “entirely delineating the exclusive boundaries of” rather than “generally delineating the boundaries of.” The distinction between generally delineating the boundaries and exclusively or entirely delineating the boundaries is the main point of contention between the parties. In support of its construction, FCA cites the New Oxford American Dictionary definition of “define” as “to state or describe exactly the nature, scope, or meaning of” something. [83-3] at 4 (emphasis added).

         As a preliminary matter, there is no need to resort to the case law cited by FCA in which other courts have used a similar construction, because the ambiguity in this case can be, and therefore must be, resolved intrinsically. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (stating that “it is improper to rely on extrinsic evidence” when intrinsic evidence alone will resolve the ambiguity).

         Using FCA's construction, the space defined as a lading receptacle in a gondola rail car changes shape when accounting for features like skid plates (red in the image below), clean out doors (blue), and side sills (green), which are attached to the sidewalls and floor that form the fundamental structure of the car.

         (IMAGE OMITTED)

         Thus, according to FCA, the lading receptacle above cannot be defined simply by the floor and wall structures, as this definition does not accurately describe the space available to hold lading. Conversely, using NSC's construction a lading receptacle defined by a floor and walls no more changes shape when doors and side sills are included than a room defined by a floor and walls changes shape because of the inclusion of doors, windows, and carpeting.

         The crux of NSC's argument is that while their own construction conforms to both the plain language interpretation and the words as used in the context of the patents, FCA's construction contradicts the way the claims and the specification[3] use the terms “defined/defining.” In the '519 patent, for instance, claim 27 describes a certain floor and wall structure as “defining a lading receptacle” while also providing for “at least one clean out port mounted in one of said beams.” [79] at 67 ('519 patent, col. 43, II. 25-7 and 37-9); see also [79] at 329-30 ('014 patent, col. 40, II. 65 to col. 41, II. 8) (describing a lading receptacle defined by a certain floor and wall structure and including “at least one clean out port mounted in said wall structure to permit material to be flushed out of said lading receptacle.”). In each of these examples, the outline of the lading receptacle is demarcated by the floor and sidewalls, regardless of whether or not the design also included functional features like a clean out port. Likewise, the specification states in multiple places that a lading receptacle is “defined by” the walls and floor of a railcar, even when there are clearly other structures attached to the car that alter the space available for lading. For instance, the first embodiment describes a railcar that “may include a wall structure . . . defining a lading containment receptacle, ” even though that same railcar has a cleanout port and inclined lower end sheet that technically impede upon the space inside the receptacle. [79] at 49-50, 56. Although the specification cannot be used to import limitations into the claims, here it serves as useful context to support a reading that is consistent with the claim language.

         FCA points out that the specification in the '519 patent actually provided that the lading receptacles in question “may include” these additional features. But whether the use of a clean out port is optional or required, the language of the claims still describes the lading receptacle as defined by the floor and sidewalls without changing the definition in the presence or absence of a clean out port.

         The patentees used “defining/defined” in a way that directly contradicts FCA's construction. For instance, in Claim 22 of the '519 patent, they refer to “said at least one floor panel [that] defines an upper flange of said centersill and said at least one cross-bearer.” [79] at 67 ('519 patent, col. 43, II. 12-14). Dependent Claim 23 goes on to say: “The rail road gondola car of claim 22 wherein said rail road gondola car is free of any other member defining a center sill top flange.” Id. ('519 patent, col. 43, II. 16-18). By FCA's logic, the information that “said rail road gondola car is free of any other member defining a center sill top flange” would be redundant, since the “floor panel [that] defines an upper flange of said centersill” in claim 22 would be the exclusive defining member. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (“[T]he presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.”). The word “define” was not used in its exclusive sense.

         FCA argues that the language of the claims supports their construction because when plaintiff intended to define only a portion of a structure, they said so explicitly. For example, Claim 1 of the '519 patent discusses “said side beams defining portions of said wall structure . . . ” [79] at 65. It is well settled that in interpreting patents, courts must give all words their effect. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). Therefore, FCA argues, the presence of the modifier “portions of” tells us that when NSC wanted to indicate that an area was not exclusively defined by side beams and wall structures, they did so. Yet adopting NSC's construction does not read out phrases like “portions of.” In Claim of 1 of '519 for instance, it is perfectly consistent to read the claim as describing side beams that delineate the outline of certain portions of the wall structure. The phrase “portions of” limits the scope of what is being defined here, but it does not alter the meaning of “defining” in that sentence or as used throughout the claims.

         Finally, FCA asserts that the prosecution history of the '600 patent supports their construction. “[A] patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution.” Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (quoting Purdue Pharma L.P. v. Endo Pharms. Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006)). The Examiner originally rejected Claim 1 of the '600 patent because another patent (the “Yost” patent) disclosed the same claimed gondola. In amending claim 1 to distinguish the patent from Yost, plaintiff added the following bolded words to the rejected claim: “A railroad gondola car comprising a gondola car body . . . including flooring . . . and a peripheral sidewall standing upwardly of said flooring, said sidewall having at least one opening defined therein defining a sidewall cleanout by which materials be flushed from said gondola car body, said floor panel extending to said sidewall at said opening . . .” [79] at 681 (emphasis added).

         FCA believes the word “defining” was used to denote that the opening in the sidewall is completely delineated by the sidewall structure, not by portions of the floor like the Yost design. NSC denies that either they or the Examiner understood the word this way. Indeed, NSC points out that if they intended to disclaim an opening defined by the sidewall and the floor, they would have done so, instead of amending the phrase to differentiate their clean out port from Yost's unloading door. FCA has not demonstrated a “clear and unmistakable disavowal of scope” during the prosecution of this patent, and nothing in the above bolded phrase sheds light on the way the word “defining” was used in the claims.

         NSC's proposed construction is consistent with the plain language of the term “defined/defining” and its use in the context of the patents. I agree with NSC's construction.

         B. “Mating, mated”

         The parties dispute whether the term “mating” or “mated” requires the union of two physically separate and distinct pieces or whether the terms can also apply to the union of two surfaces (like a web and a flange). NSC proposes the construction “describing two interlocked surfaces or pieces”/“two interlocked surfaces or pieces, ” which is the definition used in the Dictionary of Mechanical Engineering and very similar to the definition used in the Chambers Dictionary of Science & Technology. [139-1] at 8 and 11. FCA proposes the construction “joined or fitted together, ” and notes that “the word ‘interlocked necessarily requires two separate pieces, '” which is similar to the New Oxford American Dictionary and Merriam-Web ...

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