Opinion
Case No. 03 4589.
July 16, 2004
Ruling on Claims Construction
The court having reviewed the submissions of plaintiff, the Boler Company, and defendant, ArvinMeritor, Inc., hereby makes the following rulings with respect to construction of claims 1 and 13 of United States Patent No. 5,366,237 ("the patent" or "the '237 patent"):
Disputed Terms
1. "means for rigidly connecting said axle to said beam"
A "means plus function" limitation, under 35 U.S.C. § 112 ¶ 6, must "be construed to cover the corresponding structure, material, or described in the specification and equivalents thereof."
a) "rigidly" means inflexibly, not resiliently, and
b) "connecting" is joining or fastening together;
2. "orifice" is a hole or opening through which something (axle and sleeve) may pass. Although it need not be completely enclosed, it must be sufficiently enclosed to "substantially surround" that which it holds, an axle (col. 10, ll. 32-34; col. 11, l. 67) or sleeve (col. 12, l. 2-3);
3. "substantially surrounds" encloses completely or largely, at least sufficiently (in combination with other limitations) to prevent alteration of the cross-sectional configuration of the axle as referenced at col 5, ll. 28-30, col. 12, ll. 8-11;
4. "rigidly attached" means connected in a non-flexible, non-resilient manner (not necessarily entailing a continuous 360-degree weld or entire enclosure of the top and bottom portion of the axle);
5. "sleeve means" is a tubular part made to cover another part (an axle) as described in the specification at col. 8, ll. 63-68, col. 9, l. 25-30, whereby an axle is prevented from assuming a cross-sectional configuration substantially different from an unaltered configuration when torsional forces are imposed on the axle. (The sleeve is rigidly attached to and substantially surrounds the axle; it is a separate structure from the orifice of the beam);
6. ". . . whereby said axle cross-sectional configuration is prevented from assuming a cross-sectional configuration substantially different from an unaltered configuration when said torsional forces are imposed upon said axle"
a) "substantially different from an unaltered configuration" means not the same, or largely not the same, and measurably less altered than that achieved by the prior art (col.4, ll.21-26).
b) "said tortional forces" are the twisting forces causing a portion of an axle to be placed in compression and a portion to be placed in tension;
7. "window means" is an opening that resembles a window in appearance or function and permits a weld along the window's edge for attaching the sleeve to the axle;
8. "side wall" is a substantially vertical component of a beam. The side wall of the beams in the '237 device is continuous (and rigid) although not necessarily constructed of one piece. At the same time, the side wall is not of "piecemeal construction" as would permit alteration of the cross-sectional configuration of the axle; rather it permits insertion of an orifice in the side walls which orifice substantially surrounds the axle. (See ARV000616);
A beam is "a structural member (as an iron girder) usu[ally] supported at the two ends that is laid horizontally to bear a load and brace a frame" (Webster's Third Int'l Dictionary 190 (1981 ed.). The beam in the '237 device is rigid, not flexible.
9. . . . "whereby said axle cross-sectional configuration is prevented from assuming a cross-sectional configuration substantially different from an unaltered configuration when said torsional forces are imposed upon said axle" is inherent in the process rather than a claim limitation. See Texas Instruments Inc. v. U.S. Intern. Trade Com'n, 988 F.2d 1165, 1172 (1993) (A "whereby" clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim).
Judicial Estoppel Issue
ArvinMeritor has submitted a copy of a decision granting summary judgment in favor of defendant in The Boler Co. v. Watson Chalin Mfg., Inc., No. 03 CV 1266, slip op. (N.D. Ohio June 24, 2004), in which the court ruled that Boler is judicially estopped from claiming a 360 degree weld is not an element of claims 1 and 13. The court reached this conclusion after finding that Boler made a statement in The Boler Co. v. Neway Anchorlok Int'l, Inc, No. 99 CV 1934, slip op. (N.D. Ohio Mar. 14, 2000) (Exh. D to Boler's response), "that using a 360 degree weld to rigidly connect the axle to the beam refers to elements of the invention set forth in claims 1 and 13, not claim 16." Watson Chalin, slip op. at 9. Boler here argues that Watson is incorrectly decided, noting that it has moved to alter or amend that judgment. The court in Neway, construing claim 16 differentiated "means for rigidly connecting said beam to said axle" of claim 16 from the limitation of dependent claim 17, a "means for rigidly connecting said axle to said beam comprises an orifice in said beam which substantially surrounds said axle and is rigidly attached thereto." Neway, slip op. at 14. The court found that claim 16 discloses a function of rigidly connecting an axle to the beam (which could include U-bolts), id. at 16, whereas claim 17 is more limited: "a structure that rigidly adheres the axle to the beam comprising an orifice in the beam which substantially surrounds the axle and is rigidly attached thereto through a continuous 360 [degree] weld . . . around the orifice/axle interface." Id. at 16-17. Thus, the court accepted Boler's view that claim 16 was broader than claim 17. This means, perforce, that claim 16 is also broader than claims 1 and 13 (which would exclude U-bolts).
It appears, then, that the decision in Watson Chalin is not a final judgment, in which the possibility of collateral estoppel by judgment is not an issue, Miller Brewing Co. v. Jos. Schlitz Brewing Co., 605 F.2d 990, 996 (7th Cir. 1979) ("To be `final' for purposes of collateral estoppel the decision need only be immune, as a practical matter, to reversal or amendment.").
Judicial estoppel applies where the adverse party took a contrary position under oath in a prior proceeding and the prior position was accepted by the court. United States v. Owens, 54 F.3d 271, 275 (6th Cir. 1995). "Judicial estoppel prevents a party that has taken one position in litigating a particular set of facts from later reversing its position when it is to its advantage to do so." Levinson v. United States, 969 F.2d 260, 264 (7th Cir. 1992). "`Judicial estoppel is applied with caution to avoid impinging on the truthseeking function of the court . . . [and] cannot apply without some decision or admission' as to whether a party actually engaged in alleged misconduct." Id. at 265 (quoting Teledyne Industries, Inc. v. NLRB, 911 F.2d 1214, 1218-19 (6th Cir. 1990)). For the doctrine to apply, "[f]irst, the later position must be clearly inconsistent with the earlier position. Also, the facts at issue should be the same in both cases. Finally, the party to be estopped must have convinced the first court to adopt its position. . . ." Id.
In reviewing procedural matters that do not pertain to patent issues, the Federal Circuit tells us to adjudicate the rights of the parties in accordance with the applicable regional circuit law. Wang Laboratories, Inc. v. Applied Computer Sciences, Inc., 958 F.2d 355, 358 (1992). Inasmuch as the Seventh Circuit quotes the Sixth in Levinson, it is safe to say there is no material difference in the two circuits' interpretation of judicial estoppel.
Plainly, the distinction between "substantially surrounding" and "completely surrounding" was not at issue in Neway. There appears to have been no argument by the defendant in Neway that U-bolts, for example, were substantially surrounding and therefore within the bounds of claim 17. As such, Boler gained no particular advantage in arguing a 360-degree weld instead of a "substantially surrounding" weld. Boler's point was that the "means for rigidly connecting said beam to said axle" of claim 17 is the same as said means of claims 1 and 13, but claim 16 is broader because 16's "means for rigidly connecting" is not limited by the more specific means clauses of 1, 13, and 17 ("an orifice in said beam which substantially surrounds. . . ."). See Plaintiff's Response to ArvinMeritor's Notice of the Granting of a Motion for Summary Judgment at 7-8 (quoted text). Furthermore, Boler did not actually represent that claims 1 and 13 entailed the 360 degree limitation but, rather, that the "elements of the inventions" of claims 1 and 13 entailed a 360 degree weld. In light of the descriptions of preferred embodiments in the specification, the statement was at most ambiguous. For these reasons, this court declines to apply judicial estoppel to prevent Boler from arguing the "substantially surrounding" limitation of claims 1 and 13.
ORDER
Enter rulings on claims construction. Defendant's motion to strike is moot. This case will be called for status hearing on September 16, 2004, at 9:30.