This cause comes before the Court for consideration, after hearing oral arguments on September 28, 2011, on the following:
1. Motion for Patent Claim Construction by Enpat, Inc. (Doc. 59, filed July 1, 2011);
2. Response to Enpat, Inc.'s Motion for Patent Claim Construction by Harry Shannon (Doc. 63, filed Aug. 15, 2011);
3. Supplemental Markman Brief by Enpat, Inc. (Doc. 69, filed Oct. 14, 2011); and
4. Supplemental Claim Construction Brief by Harry Shannon (Doc. 70, filed Oct. 14, 2011).
This matter is before the Court for the construction of a patent, United States Patent Number 6,328,260 (the "Patent"), that claims a wing spar modification kit to be used for strengthening wing spars on all models of Lake amphibious aircraft. Plaintiff Enpat, Inc. ("Enpat") and Defendant Harry Shannon ("Shannon") agree that most of the terms of the Patent are unambiguous, and they raise only two claim construction issues. (Doc. No. 59 at 20-24; Doc. No. 63-2).
The first issue is whether the preamble of independent claim 1, which provides some detail concerning the airplane and wing spar to which the wing spar modification kit is to be applied, should be construed as limiting. (Doc. No. 59 at 16-19; Doc. No. 63 at 2, 6-16). Enpat argues that the preamble is not limiting (Doc. No. 59 at 16-19; Doc. No. 69 at 2-6), and Shannon takes the opposite position (Doc. No. 63 at 6-16; Doc. No. 70 at 1-7). The second issue is whether the phrase "doubler-protective coating" in independent claim 1 should be construed to mean only "a heat-cured ceramic powder coating." (Doc. No. 63 at 2, 33-34). Enpat argues that such a limiting construction is contrary to the plain meaning of doubler-protective coating and would violate the concept of claim differentiation. (Doc. No. 69 at 7-10). Shannon counters that the specification and prosecution history compel that the phrase "doubler-protective coating" be so limited. (Doc. No. 63 at 2, 16-18; Doc. No. 70 at 7-9). After reviewing the record, hearing arguments from counsel, and applying applicable law, the Court rejects Shannon's arguments and concludes that: (1) the preamble of independent claim 1 does not provide additional limitations not found in the body of the claim, and (2) the phrase "doubler-protective coating" is not limited to "a heat-cured ceramic powder coating".
"A claim in a patent provides the metes and bounds of the right which the patent confers on the patentee to exclude others from making, using or selling the protected invention." Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). In construing claims, courts first examine the patent's intrinsic evidence to define the patented invention's scope.*fn1 See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc); C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004). This intrinsic evidence includes the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R. Bard, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the pertinent art at the time of filing. Chamberlain Group, Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008); Phillips, 415 F.3d at 1312. "The claims themselves provide substantial guidance as to the meaning of particular claim terms." Phillips, 415 F.3d at 1314. A term's context in the asserted claim can be very instructive, as courts presume a difference in meaning and scope when a patentee uses different phrases in separate claims. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id. However, courts may not use this principal of claim differentiation to broaden claims beyond their correct scope. Id. "[C]laims must always be read in view of the specification of which they are a part." Markman,52 F.3d at 979.
"The specification 'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of the disputed term.'" Markman,52 F.3d at 979 (quoting Vitronics, 90 F.3d at 1582). A patentee may define his own terms in the specification, giving a claim term a different meaning than the term would otherwise possess, or a patentee may disclaim or disavow the claim scope otherwise included in the ordinary and accustomed meaning of the terms. Phillips, 415 F.3d at 1315; Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). While "the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims." Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323.
The prosecution history is another tool used to supply the proper context for claim construction. Home Diagnostics, Inc. v. Lifescan Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004). The doctrine of prosecution history disclaimer "limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowances." Omeg Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). This doctrine does not apply where the prosecution history is ambiguous. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. Cir. 2008). The disclaimer of claim scope must be clear and unmistakable. Id. at 1374.
Extrinsic evidence is "less significant than the intrinsic record in determining the legally operative meaning of claim language." Phillips, 415 F.3d at 1317 (quoting C.R. Bard, 388 F.3d at 862). Technical dictionaries and treatises may help a court understand the underlying technology and the manner in which one of skill in the art might use the claim terms, but technical dictionaries and treatises may provide definitions that are too broad or that may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid a court in understanding the underlying technology and determining the particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported assertions as to a term's definition are entirely unhelpful to a court. Id. Accordingly, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms." Id.
The Patent, Prosecution History, and Procedural Background
On October 25, 2000, inventors Jack M. Tarbox and Philip J. Baker (the "Inventors") filed the application that matured into the Patent. (Doc. No. 59-2). On December 11, 2001, the United States Patent and Trademark Office ("USPTO") granted the Patent with minimal modifications to the initial application. The few modifications that were made followed an office action dated April 26, 2001, where the examiner rejected all 14 claims under 35 U.S.C. 112 (the "Office Action"). The examiner stated, in pertinent part:
In claim 1, lines 1 and 7, the phrase "Lake model airplane" is vague and indefinite since the phrase contains what appears to be a trademarked name and is thus not clearly defined since a trademark defines the source of an object, not its parameters. The limitations of the claimed plane should be made in generic terms of art. Likewise, claim 7 contains an improper trademark name. Also, the limitations of the bolts of claim 14 is indefinite, since the designations made are subject to change.
3. Claims 1-14 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph ...