Opinion
Case No. 4:17-cv-00273-SMR-SBJ
2022-04-25
G.W. LISK COMPANY, INC., Plaintiff, v. POWER PACKER NORTH AMERICA, INC., d/b/a GITS Manufacturing Company, Defendant.
Matthew David Callanan, Espnola F. Cartmill, Belin McCormick, P.C., Des Moines, IA, Brittany A. Washington, Pro Hac Vice, Candace M. Polster, Pro Hac Vice, Jason C. White, Pro Hac Vice, Nicholas A. Restauri, Pro Hac Vice, Morgan Lewis & Bockius LLP, Chicago, IL, Erika N.D. Stanat, Pro Hac Vice, Jessica Nicole Clemente, Pro Hac Vice, Harter Secrest & Emery LLP, Rochester, NY, Michael J. Berchou, Pro Hac Vice, Harter, Secrest & Emery LLP, Buffalo, NY, for Plaintiff. Jeffrey D. Harty, Allison Elizabeth Kerndt, Matthew A. McGuire, Nyemaster Goode PC, Des Moines, IA, Adam A. Allgood, Pro Hac Vice, Alan M. Fisch, Pro Hac Vice, Elizabeth Bernard, Pro Hac Vice, Jeffrey M. Saltman, Pro Hac Vice, Joseph Edell, Pro Hac Vice, Lisa N. Phillips, Pro Hac Vice, R. William Sigler, Pro Hac Vice, Fisch Sigler LLP, Washington, DC, Jonathan H. Margolies, Pro Hac Vice, Katherine W. Schill, Pro Hac Vice, Melanie J. Reichenberger, Pro Hac Vice, Michael Best & Friedrich LLP, Milwaukee, WI, for Defendant.
Matthew David Callanan, Espnola F. Cartmill, Belin McCormick, P.C., Des Moines, IA, Brittany A. Washington, Pro Hac Vice, Candace M. Polster, Pro Hac Vice, Jason C. White, Pro Hac Vice, Nicholas A. Restauri, Pro Hac Vice, Morgan Lewis & Bockius LLP, Chicago, IL, Erika N.D. Stanat, Pro Hac Vice, Jessica Nicole Clemente, Pro Hac Vice, Harter Secrest & Emery LLP, Rochester, NY, Michael J. Berchou, Pro Hac Vice, Harter, Secrest & Emery LLP, Buffalo, NY, for Plaintiff.
Jeffrey D. Harty, Allison Elizabeth Kerndt, Matthew A. McGuire, Nyemaster Goode PC, Des Moines, IA, Adam A. Allgood, Pro Hac Vice, Alan M. Fisch, Pro Hac Vice, Elizabeth Bernard, Pro Hac Vice, Jeffrey M. Saltman, Pro Hac Vice, Joseph Edell, Pro Hac Vice, Lisa N. Phillips, Pro Hac Vice, R. William Sigler, Pro Hac Vice, Fisch Sigler LLP, Washington, DC, Jonathan H. Margolies, Pro Hac Vice, Katherine W. Schill, Pro Hac Vice, Melanie J. Reichenberger, Pro Hac Vice, Michael Best & Friedrich LLP, Milwaukee, WI, for Defendant.
ORDER ON CLAIM CONSTRUCTION
STEPHANIE M. ROSE, CHIEF JUDGE
After many years of litigation on alleged patent infringement, the Court must now define three terms in the patent and determine whether a preamble limits it. The Court defines the terms as follows: First, "closed" is given its plain meaning, which the patent demonstrates is regulate or restrict. Second, "blocked" means "impeded." Third, "neutral position" has a clear meaning in the patent. Finally, it is unnecessary to address whether the preamble is limiting because the record does not suggest the dispute is material.
I. BACKGROUND
A. Technical Background
An exhaust gas recirculation ("EGR") valve is used in an internal combustion engine to "recirculate a portion of the exhaust gases emitted ... back through the combustion process." [ECF No. 1-2 at 6]. This valve works by diverting specific amounts of the "engine gas" and mixing them with "fresh air / fuel." Id. at 6. The process lowers the "combustion temperature" and reduces "the formation of harmful compounds such as nitrous oxide." Id. There are numerous possible designs for an EGR valve, one of which is described by Patent No. U.S. 6,601,821 ('821 patent). Id. The '821 patent describes a two-stage EGR valve. Id. A cross-sectional view of the design is shown below. See [ECF No. 1-2 at 4 (Figure No. 2)]. Both parties submitted versions of the figure that clarified the components of the valve.
[ECF No. 94 at 9].
The EGR valve in the patent functions as follows: An engine control module ("ECM") applies an electrical current to a solenoid, colored in purple in the modified diagram. The solenoid regulates the movement of a directional valve – shown in orange – by shifting it through various positions. The directional valve guides the movement of a fluid, typically pressurized engine oil, along the green path to one of two surfaces on a double-acting actuator. This process moves the actuator, colored red, through several different positions that adjust the placement of a dual poppet head mechanical device, highlighted in light blue. When the dual poppet head changes its position, it regulates how much exhaust gas moves into the engine. The ECM applies more electrical current to the solenoid to maintain the dual poppet head and exhaust valve in their desired positions, which allows exhaust gas into the engine. After some time, the dual poppet head closes.
B. Procedural Background
On July 15, 2016, Plaintiff G.W. Lisk Company, Inc. ("Lisk") filed suit against Defendant Power Packer North America ("Power Packer"), doing business as GITS Manufacturing Company, in the United States District Court for the Western District of New York, alleging that Power Packer infringed upon the '821 patent. [ECF No. 1]. After Power Packer filed a motion to dismiss for improper venue, [ECF No. 11], the parties stipulated to transfer this case to the United States District Court for the Southern District of Iowa. [ECF No. 14].
The parties agreed to the venue transfer based on TC Heartland LLC v. Kraft Foods Grp. Brands LLC , which held that a corporate defendant in patent infringement cases is considered to reside in their state of incorporation for venue purposes. 581 U.S. 258, 137 S. Ct. 1514, 1517, 197 L.Ed.2d 816 (2017).
On October 19, 2017, Power Packer filed a motion to stay the action pending inter partes review of the patent by the Patent Trial and Appeal Board ("PTAB"). [ECF No. 32]. The Court denied this motion to stay because the PTAB had not yet granted Power Packer's request for inter partes review. [ECF No. 40]. On March 27, 2018, Power Packer renewed its motion to stay after the PTAB granted inter partes review of the patent. [ECF No. 48]. The Court granted the renewed motion shortly thereafter. [ECF No. 49].
On May 9, 2019, the PTAB invalidated much of the '821 patent. [ECF Nos. 50-1; 50-2]. Specifically, it held that most of the patent's twenty-two claims, except for claims 6-11, 14, 15, and 19, did not comply with statutory patentability requirements. [ECF Nos. 50-1 at 4; 50-2 at 4]. The parties filed cross-appeals with the United States Court of Appeals for the Federal Circuit, which affirmed the PTAB in whole on April 13, 2021. [ECF Nos. 71-3; 71-4].
On April 21, 2021, the parties filed a joint motion to dissolve the stay and reinstitute discovery and scheduling deadlines. [ECF No. 71]. The Court granted the motion. [ECF No. 72]. On August 27, 2021, Lisk and Power Packer filed their opening claim construction briefs, which asked the Court to define three disputed terms and decide whether a preamble was limiting. [ECF Nos. 94–94-4; 95–95-8]. On September 9, 2021, the parties submitted their responsive claim construction briefs. [ECF Nos. 97; 98]. The Court conducted a hearing where the parties provided background on the technological components of the patent. [ECF No. 112]. On December 3, 2021, the parties presented substantive oral arguments on claim construction. [ECF No. 114].
On January 26, 2022, Power Packer requested that the PTO conduct an ex parte reexamination of "the nine remaining claims asserted by Plaintiff G.W. Lisk Company." [ECF Nos. 123; 139-1 at 2]. On February 24, 2022, the PTO granted Power Packer's request for reexamination. [ECF No. 154 at 2]. On March 1, 2022, Power Packer filed an expedited motion to stay pending resolution of the Ex Parte Reexamination. [ECF No. 142]. The Court denied this motion to stay on March 14, 2022. [ECF No. 154]. After considerable delay, this issue is ready for review. [ECF Nos. 94; 95; 97; 98; 156; 157]. II. GOVERNING LAW
A. Background on Patent Law
The United States Constitution provides Congress with the power "to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Figueroa v. United States , 466 F.3d 1023, 1030 (Fed. Cir. 2006) (quoting U.S. Const. art. I, § 8, cl. 8 ). Congress used this authority to create a system where "whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement ... may obtain a patent." 35 U.S.C. § 101. There are "two distinct elements of a patent document." Markman v. Westview Instruments, Inc. , 517 U.S. 370, 373, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). "First, it contains a specification describing the invention ‘in such full, clear, concise, and exact terms as to enable any person skilled in the art ... to make and use the same.’ " Id. (quoting 35 U.S.C. § 112 ). "Second, a patent includes one or more ‘claims,’ which ‘particularly point out and distinctly claim the subject matter which the applicant regards as his invention.’ " Id. (cleaned up). The claims "define the scope of the patent grant," which sets the parameters of what others cannot use or sell without permission. Id. at 373, 116 S.Ct. 1384.
"Patent lawsuits charge what is known as infringement." Markman , 517 U.S. at 374, 116 S.Ct. 1384. There is a two-step process to determine whether a party has infringed on a patent. Markman v. Westview Instruments, Inc. , 52 F.3d 967, 976 (Fed. Cir. 1995). "First, the meaning and scope of the relevant claims must be ascertained." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc. , 381 F.3d 1111, 1115 (Fed Cir. 2004). "Second, the properly construed claims must be compared to the accused device." Id. The first step – known as claim construction – is a question of law to be determined exclusively by the court. Teva Pharms. USA, Inc. v. Sandoz, Inc. , 574 U.S. 318, 331, 135 S.Ct. 831, 190 L.Ed.2d 719 (2015). The second step is a question of fact to be determined by a factfinder. Id.
B. Claim Construction
"We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’ " Phillips v. AWH Corp. , 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996) ); CCS Fitness, Inc. v. Brunswick Corp. , 288 F.3d 1359, 1366 (Fed. Cir. 2002) (there is a "heavy presumption" the claim term carries its ordinary meaning.). An ordinary and customary meaning is "the meaning it would have to a person of ordinary skill in the art at the time of the invention." Innova , 381 F.3d at 1116 (citation omitted). "The ordinary meaning of a claim term may be determined by reviewing a variety of sources, including the claims themselves and other intrinsic evidence including the written description and the prosecution history and dictionaries and treatises." Teleflex, Inc. v. Ficosa N. Am. Corp. , 299 F.3d 1313, 1325 (Fed. Cir. 2002) (internal citations omitted).
"The claims themselves provide substantial guidance as to the meaning of particular terms." Phillips , 415 F.3d at 1314. "[T]he context in which a term is used in the asserted claim can be highly instructive." Schindler Elevator Corp. v. Otis Elevator Corp. , 593 F.3d 1275, 1282 (Fed. Cir. 2010) (citing Phillips , 415 F.3d at 1314 ). Other claims are helpful because "claim terms are normally used consistently throughout the patent." Phillips , 415 F.3d at 1314 (citing Rexnord Corp. v. Laitram Corp. , 274 F.3d 1336, 1342 (Fed. Cir. 2001) ). "Differences among claims can be a useful guide in understanding the meaning of particular claim terms." Kara Tech. Inc. v. Stamps.com Inc. , 582 F.3d 1341, 1347 (Fed. Cir. 2009) (quoting Phillips , 415 F.3d at 1314 ). "If the claim term has a plain and ordinary meaning, our inquiry ends." Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc. , 711 F.3d 1348, 1361 (Fed. Cir. 2013).
Although examining a claim's language is the primary method to determine the meaning of disputed terms, claims are part of "a fully integrated written instrument" that includes "a specification." Phillips , 415 F.3d at 1315. The specification "is always highly relevant to the claim construction analysis" due to "the statutory requirement that the specification describe the claimed invention in ‘full, clear, concise, and exact terms.’ " Id. at 1315–1316 (quoting 35 U.S.C. § 112 ). "Claims must be construed so as to be consistent with the specification." Playtex Prods., Inc. v. Procter & Gamble Co. , 400 F.3d 901, 906 (Fed. Cir. 2005) (quoting Merck & Co. v. Teva Pharms. USA, Inc. , 347 F.3d 1367, 1370 (Fed. Cir. 2003) ). "Limitations from the specification may not be read into the claims." Bell Atl. Network Servs., Inc. v. Covad Commc'ns Grp., Inc. , 262 F.3d 1258, 1270 (Fed. Cir. 2001) (citing Comark Commc'ns, Inc. v. Harris Corp. , 156 F.3d 1182, 1186 (Fed. Cir. 1998) ). There is "a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification." Id.
A court "should also consider the patent's prosecution history, if it is in evidence." Phillips , 415 F.3d at 1317. This prosecution history is "the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent." Id. "The purpose of consulting the prosecution history in construing a claim is to ‘exclude any interpretation that was disclaimed during prosecution.’ " Chimie v. PPG Indus., Inc. , 402 F.3d 1371, 1384 (Fed. Cir. 2005) (quoting ZMI Corp. v. Cardiac Resuscitator Corp. , 844 F.2d 1576, 1580 (Fed. Cir. 1988) ). Only "a clear and unmistakable disavowal" of the interpretation can limit the patentee in later legal proceedings. 3M Innovative Props. Co. v. Tredegar Corp. , 725 F.3d 1315, 1322 (Fed. Cir. 2013).
Courts may use materials "external to the patent and file history, such as expert testimony, inventor testimony, dictionaries, and technical treatises and articles." Vitronics , 90 F.3d at 1584 (citation omitted). They may not consider extrinsic evidence when "an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term." Id. at 1583. "Legal error arises when a court relies on extrinsic evidence that contradicts the intrinsic record." Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC , 824 F.3d 999, 1003 (Fed Cir. 2016) (citations omitted). The best use of extrinsic evidence is "to help [the court] understand the underlying technology" because "testimony on the technology is far different from other expert testimony ... on the proper construction of a disputed claim term." Vitronics , 90 F.3d at 1585.
C. Impact of Preamble
"Whether to treat a preamble as a limitation is ‘determined on the facts of each case in light of the overall form of the claim.’ " Deere & Co. v. Bush Hog, LLC , 703 F.3d 1349, 1357 (Fed. Cir. 2012) (quoting Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc. , 98 F.3d 1563, 1572 (Fed. Cir. 1996) ). "A preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’ " Arctic Cat Inc. v. GEP Power Prods., Inc. , 919 F.3d 1320, 1328 (Fed. Cir. 2019) (quoting Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc. , 289 F.3d 801, 808 (Fed. Cir. 2002) ). "[A] preamble limits the invention if it recites essential structure or steps." Catalina , 289 F.3d at 808 (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co. , 182 F.3d 1298, 1305 (Fed. Cir. 1999) ). A helpful test is to delete "the disputed phrase from the preamble" and determine whether it would "affect the structural definition or operation of the [invention] itself." Id. at 810.
III. ANALYSIS
A. Disputed Terms
"A court need not attempt the impossible task of resolving all questions of meaning with absolute, univocal finality." Eon Corp. IP Holdings v. Silver Spring Networks , 815 F.3d 1314, 1318 (Fed. Cir. 2016). "This is because ‘[s]uch an endeavor could proceed ad infinitum, as every word – whether a claim term itself, or the words a court uses to construe a claim term – is susceptible to further definition ...’ " GPNE Corp. v. Apple Inc. , 830 F.3d 1365, 1373 (Fed. Cir. 2016) (quoting Eon Corp. , 815 F.3d at 1319 ). "[A] sound claim construction need not always purge every shred of ambiguity." Acumed LLC v. Stryker Corp. , 483 F.3d 800, 806 (Fed. Cir. 2007). A court only needs to define terms "to the extent necessary to resolve the controversy." Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc. , 200 F.3d 795, 803 (Fed. Cir. 1999) (citation omitted).
This task occasionally requires a court to go beyond "[a] determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning.’ " O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd. , 521 F.3d 1351, 1361 (Fed. Cir. 2008). These instances occur "when a term has more than one ‘ordinary’ meaning or when reliance on a term's ‘ordinary’ meaning does not resolve the parties' dispute." Id. A court should also conduct this analysis when parties dispute "not the meaning of the words themselves, but the scope that should be encompassed by the claim language." NobelBiz, Inc. v. Glob. Connect, L.L.C. , 701 Fed. App'x. 994, 997 (Fed. Cir. 2017) (quoting O2 Micro Int'l Ltd. , 521 F.3d at 1361 ) (emphasis in original). In short, the purpose of claim construction is to define "meanings and technical scope ... for use in the determination of infringement." U.S. Surgical Corp. v. Ethicon, Inc. , 103 F.3d 1554, 1568 (Fed. Cir. 1997).
1. "Closed" and "Closing"
The first terms in dispute are "closed" and "closing." [ECF Nos. 94 at 11; 95 at 10]. The parties vigorously contest whether the terms should be defined, and if so, how. Id. The term "closed" needs additional clarification because there is more than one ordinary meaning of the term. See O2 Micro Int'l. , 521 F.3d at 1362 ("When the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it."). The best definition of the term "closed" is its plain and ordinary meaning akin to regulate or restrict. See Virnetx, Inc. v. Cisco Sys., Inc. , 767 F.3d 1308, 1318 (Fed. Cir. 2014) (when a patent "repeatedly and consistently" characterizes a claim term in a particular way, it is proper to construe the term in that manner).
There are three instances of claim language that are relevant for the Court's analysis. Claim I states, "double-acting actuator powered by a second fluid for moving the flow-regulating valve in different open and closed directions for correspondingly opening and closing the flow-regulating valve." [ECF No. 1-2 at 9]. Another portion of Claim I declares, "the double acting-actuator having (a) a first surface arranged for exposure to fluid pressure of the second fluid for moving the flow-regulating valve in the open direction and (b) a second surface arranged for exposure to fluid pressure of the second fluid for moving the flow-regulating valve in the closed direction." Id. Finally, Claim VII's relevant language is "movement of the spool to the second directional valve position also moves the double-acting actuator in a direction that decompresses the feedback spring and moves the flow-regulating valve in the closed direction." Id.
Lisk asserts that this language should be interpreted as written in the patent, where "closing the flow-regulating valve" means "the flow-regulating valve [is] capable of being moved in a closed direction towards a closed position." [ECF No. 95 at 10]. It bases this argument on the claim language. Id. at 11 ("The claims also recite that this movement of the flow-regulating valve ‘regulates a flow of a first fluid.’ "). Lisk also highlights portions of the specification where the language refers to "restricting flows" in support of its interpretation. Id. at 12. In short, it maintains that "closed" is customarily understood by a person skilled in the art at the time of the invention (POSITA) to mean something similar to regulate or restrict. Id.
The parties agree that a person of ordinary skill in the art at the time of the invention "would have at least a B.S. degree in mechanical engineering or an equivalent field, and at least five years of professional work experience in the characterization, use, and / or design of hydraulic and / or pneumatic devices." [ECF Nos. 94; 95; 97; 98].
Power Packer asserts that "a POSITA would've understood from the claim language and specification that closing the ‘flow-regulative valve’ stops the flow of fluid through the valve." [ECF No. 94 at 11–12]. It points to the description of the dual poppet head's movement mechanics to argue that "closed" means "stopped." Id. at 12–13. It highlights the specification's usage of "closed" to mean "stopped" in the context of spool movement. Id. at 15 ("when the spool is in the neutral position, the specification states that ‘further flow to the piston is stopped.’ "). Power Packer bolsters its interpretation with the declaration of Professor Thomas Labus, who explains "a POSITA would understand that the ‘closed’ and ‘closing’ terms correspond with stopping the flow through the claimed flow-regulating valve." Id. at 16 (citing Labus Decl. at ¶¶ 21–22).
The appropriate construction of " closed" is the plain language definition provided in the patent itself: regulate or restrict. Beginning with claim language, the term "closed" is frequently coupled with the word "direction." [ECF No. 1-2 at 9 (Claim I)]. "[C]losing" is paired with "opening." Id. These phrases suggest the double-acting actuator moves the dual poppet head through a range of positions between which it significantly restricts the entry of exhaust gas to the car engine to where it does so minimally. Id. The dual poppet head can reach positions where no exhaust gas enters the engine or where it enters unhindered, but is not limited to these positions. Id. Thus, the patent is clear that its usage of "closed" and "closing" are best understood to mean regulate or restrict, where the regulation or restriction of entry of exhaust gas into the engine can range from partial to complete.
The specification supports this interpretation of the claim term. The Summary of Invention states, "an exemplary two-stage proportional flow control valve ... incorporates an exhaust valve that regulates exhaust flow rates recirculated to an engine." [ECF No. 1-2 at 6]. It further explains, "the directional valve controls the flow of the pressurized engine oil to the fluid-powered actuator to adjust the position of the exhaust valve." Id. The Detailed Description clarifies that "the dual-poppet head body includes a first poppet head ... for restricting flows between the inlet passage and the combined outlet passage." Id. at 7. It explicates that "a second poppet head ... for restricting flows between the inlet passage and the combined outlet passage." Id.
The specification also does not support Power Packer's construction of "closed" to mean "stopped." The Summary of Invention describes how "a fluid-powered actuator ... provides the necessary force for opening and closing the exhaust valve." [ECF No. 1-2 at 6]. A few paragraphs later, the patent explains how "further flow to the piston is stopped." Id. The usage of these terms in the same portion of the patent suggests they have different meanings absent contrary evidence. Helmsderfer v. Bobrick Washroom Equip., Inc. , 527 F.3d 1379, 1382 (Fed. Cir. 2008) ; CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG , 224 F.3d 1308, 1317 (Fed. Cir. 2000).
The patent's repeated and consistent usage leaves little room to reach any conclusion other "closed" is understood to have its plain meaning akin to regulate or restrict.
2. "Blocked"
The next term in dispute comes from the patent's usage of the word " blocked," which is found in claims V and XII. [ECF Nos. 94 at 16; 95 at 14]. The parties offer different definitions for the terms. Id. "Blocked" is best understood to mean "impede."
There are two instances of the term blocked in the claim language. The first instance is in Claim V, which states, "the spool is moveable to a neutral position at which communication between the first and second surfaces and the supply and tank port is blocked." Id. Claim XII explains that "providing feedback that ... restores the directional valve to a neutral position at which differential flows of the second fluid to the first and second surfaces are blocked." Id.
Lisk asserts the appropriate construction of "blocked" is that "the relevant fluid flows be sufficiently ‘impeded’ to limit the movement of the double-acting actuator and maintain the flow-regulating valve in the desired position." [ECF No. 95 at 14]. In support of its position, it points to claim language describing how the pressurized fluid moves "the double acting actuator through a range of positions." Id. This language, it contends, means the fluid is never blocked in the sense that it is completely or permanently stopped, but is only temporarily impeded. Id. Lisk maintains the specification supports this construction because it repeatedly explains how the pressurized fluid is only temporarily inhibited. Id. at 16. Finally, Lisk notes that Power Packer's proposed claim construction renders the product inoperable. Id. at 18.
Power Packer maintains that the appropriate definition of "blocked" is "stopped." [ECF No. 94 at 16]. It contends Claims V and XII demonstrate how communication between the first and second surfaces is fully stopped when the spool reaches the appropriate position. Id. Power Packer supports its argument by highlighting that the "specification uses ‘stopped’ interchangeably with ‘blocked.’ " [ECF No. 97 at 9]. Finally, it argues the patent is void for indefiniteness if Lisk's proposed claim construction is adopted by the Court. Id. at 13.
"A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc. , 572 U.S. 898, 901, 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014). A claim is not indefinite merely because it is broad or uses terms of degree. Niazi Licensing Corp. v. St. Jude Med. S.C., Inc. , 2021-1864, 30 F.4th 1339, 1347-48 (Fed. Cir. Apr. 11, 2022) (citing BASF Corp. v. Johnson Matthey, Inc. , 875 F.3d 1360, 1367 (Fed. Cir. 2017) ). The Court declines to rule on this issue without additional arguments. See Saso Golf, Inc. v. Nike, Inc. , 843 Fed. App'x 291, 297 (Fed. Cir. 2021) (discussing how the district court provided parties an opportunity to brief the issue before its "final decision" on definiteness).
Beginning with the claim language, Claim XII explains that "the electrical signal" from the ECM converts into a force upon a solenoid, which moves a "directional valve." [ECF No. 1-2 at 9]. The movement of this directional valve "directs a flow of the second fluid" to one of two surfaces on the actuator. Id. Depending on the surface to which the second fluid is directed, the actuator will move in one direction or another. [ECF No. 95 at 15]. This design allows the directional valve to reach "a neutral position" where flow of the second fluid, typically engine oil, to the surfaces of the actuator are "blocked." [ECF No. 1-2 at 9].
The neutral position, where the flow of oil is "blocked," appears unique in a few respects. First, the "blocked" position occurs for a short period of time. Protective Optics, Inc. v. Panoptx, Inc. , 458 F. Supp. 2d. 1053, 1058–59 (N.D. Cal. 2006) ("the plain meaning of ‘blocks’ ... when not used in the absolute sense, also implies an element of time."). This is demonstrated by the claim language, which explains that "changes in the electrical signal" allow flow of the second fluid to resume after short periods of time. [ECF No. 1-2 at 9]. Second, the flow of the second fluid is only blocked to the extent necessary to prevent further movement of the double-acting actuator (i.e., "to maintain the exhaust valve in a desired position") and this block can resolve at any time. Id. at 7. Simply put, the best understanding of "blocked" is that it means "impede" because the flow of the second fluid is only temporarily impeded from interacting with the actuator.
The patent does not support Power Packer's proposed claim construction. Power Packer's argument that "blocked" means "stopped" is based on a comparison of the language in Claim XII with the patent's specification. [ECF No. 94 at 15–16]. Specifically, it maintains the patent's usage of "blocked" in Claim XII and its usage of "stopped" in the respective part of the specification demonstrates the patentee meant the terms to be interchangeable. Id. Power Packer did not provide sufficient evidence to support its argument that the patentee meant for the terms to be interchangeable, which means the argument is foreclosed. CAE Screenplates , 224 F.3d at 1317 (courts "presume that the use of ... different terms in the claims connotes different meanings" absent "evidence to the contrary.").
In short, the patent provides two reasons why "blocked" should be understood to mean "impede": (1) The claim language supports such an interpretation; and (2) The specification does not support Power Packer's construction. Although the construction is broad, a "patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning." Thorner v. Sony Comput. Ent. Am. LLC , 669 F.3d 1362, 1367 (Fed. Cir. 2012). 3. "Neutral Position"
The third disputed term is the patent's usage of " neutral position," a term that is found in three of the patent's claims. [ECF No. 1-2 at 9]. The parties differ on whether it should be defined, and if so, how. [ECF Nos. 94 at 16; 95 at 18]. The term "neutral position" is defined by the patent's plain and ordinary language and does not need further construction.
The third term is found in Claims V, VIII, and XII. [ECF Nos. 94 at 17; 95 at 18]. The relevant language in Claim V explains that "the valve in which the spool is also movable to the neutral position at which communication between both the first and second surfaces and the supply and tank ports is blocked." [ECF No. 1-2 at 9]. Claim VIII spells out that "the valve ... moves the double-acting actuator in a direction that restores the spool to the neutral position." Id. The applicable phrasing in Claim XII is "feedback between the double acting actuator and the directional valve ... restores the directional valve to a neutral position." Id.
Lisk asserts that "no construction of the term is necessary, and that ‘neutral position’ should carry its plain and ordinary meaning, which is already recited in the claims themselves." [ECF No. 95 at 18]. It maintains neutral position is "already defined" because it only occurs "where the fluid flow to the double acting actuator is ‘blocked.’ " Id. at 19. Lisk contends the specification does not provide "any basis to deviate from th[is] definition" in the claim language and in fact supports the interpretation. [ECF No. 98 at 16].
Power Packer relies heavily on the declaration of Professor Thomas Labus for its argument on the "neutral position." [ECF No. 94]. Dr. Labus explains how the patent covers numerous engine constructions. [ECF No. 94-1 at 9 (Labus Decl.)]. Power Packer relies on Labus's declaration to assert that "the meaning of ‘neutral position’ isn't clear from the claim language alone." [ECF Nos. 94 at 18; 97 at 14]. It further asserts there is no uniform definition of neutral position to substitute given the lack of clarity. [ECF No. 97 at 14]. Based on this, Power Packer suggests the Court define "neutral position" as an "equilibrium position." Id. at 18.
Power Packer's reliance on the Labus declaration as its primary source on the lack of clarity in the claim language may go outside the appropriate use of extrinsic evidence. Dow Chem. Co. v. Sumitomo Chem. Co., Ltd. , 257 F.3d 1364, 1373 (Fed. Cir. 2001) ("extrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even implicitly.").
The claim language and specification provide a clear definition of "neutral position." Under the claim language, the directional valve begins in a position where there is no current applied to the solenoid and as a result no exhaust gas flows into the engine. [ECF No. 1-2 at 9]. An electrical signal causes the application of force onto the directional valve, which moves "between a first position that directs a flow of the second fluid to the first surface of the double-acting actuator" and "a second position that directs the flow of the second fluid to a second surface of the double-acting actuator." Id. The directional valve reaches a position known as "a neutral position," where "differential flows of the second fluid to the first and second surfaces are blocked." Id. The claim language defines the "neutral position" in relation to its ability to "block" the entry of the second fluid to the double-acting actuator.
The specification provides a similar, but more detailed description of the "neutral position." [ECF No. 1-2 at 8]. It clarifies that the directional valve can reach one of three positions. Id. The first position – known as the "initial position" – occurs where there is "no current applied to the solenoid" and the exhaust valve is closed. Id. at 8. The second position – called the "actuated position" – happens when the application of an electrical current leads to the opening of the exhaust valve. Id. The final position – known as the "neutral position" – transpires when the directional valve "block [s]" the flow of the second fluid to the actuator. Id. Yet again, the patent defines the "neutral position" in relation to blocking the second fluid.
Additionally, the specification does not support Power Packer's claim construction. It states, "a new equilibrium is restored at the neutral position of the spool." [ECF No. 1-2 at 9]. If the Court were to construe "neutral position" to mean "an equilibrium position," the construction would use equilibrium twice, which would render one of these phrases redundant. Courts avoid constructions that render terms meaningless or redundant. See Pulse Elecs., Inc. v. U.D. Elec. Corp. , 860 Fed. App'x. 735, 740 (Fed. Cir. 2021) (citing ERBE Elektromedizin GmbH v. Canady Tech. LLC , 629 F.3d 1278, 1286 (Fed. Cir. 2010) ). The Court declines to adopt a claim construction that would make the phrase "equilibrium" or the phrase "neutral position" surplusage.
The term "neutral position" does not need further definition because the patent provides a clear and consistent usage in the claims and specification. Barkan Wireless Access Techs., L.P. v. Cellco P'ship , 748 Fed. App'x. 987, 992 (Fed. Cir. 2018).
B. Impact of Preamble
This dispute focuses on the preamble of Claim I, which states, "a two-stage proportional system control valve assembly." [ECF No. 1-2 at 9]. The parties dispute whether the preamble's language limits the products covered by the patent and if so, how. [ECF Nos. 95 at 21; 94 at 20]. Lisk asserts that only the term "proportional" in the preamble limits the scope of the patent. [ECF No. 95 at 21]. Power Packer maintains the entire preamble of Claim I limits the patent. [ECF No. 94 at 20]. The dispute is not material to the outcome of the litigation and need not be resolved.
"The effect of preamble language" is considered "a claim-construction issue." Arctic Cat , 919 F.3d at 1327 (citing Deere , 703 F.3d at 1358 ). A court only needs to construe the terms to the extent needed to resolve the dispute. Sumitomo Dainippon Pharma Co., Ltd. v. Emcure Pharms. Ltd. , 887 F.3d 1153, 1157 (Fed. Cir. 2018). Under these guidelines, a court can decline to "construe the claim preambles ... where the construction is not ‘material to the dispute.’ " Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. Matal , 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs. , 200 F.3d at 803 ). The litigants must "identify the aspects of their case that are material" to the dispute. Vivid Techs. , 200 F.3d at 803.
Before the claim construction proceedings in this Court, the PTAB considered whether the preamble of claim I limited the entire patent. Power-Packer N. Am., Inc. v. G.W. Lisk Co., Inc. , Case IPR 2017-02034, 2018 WL 1402058, at *3–7 (Patent Tr. & App. Bd. Mar. 19, 2018). The PTAB held that the term "proportional" limited the patent because it was so important to the patent. This led the PTAB to define proportional to mean "correspond to." Id. at *5. However, the PTAB declined to address whether the term "two-stage" in the preamble was limiting because it did not "appear to resolve any controversy between the parties." Id. at *6. The record does not suggest any reason why interpreting preamble of Claim I resolves a controversy between the parties. First, Power Packer did not provide an explanation on why constructing the preamble of Claim I is material in its opening claim construction brief. [ECF No. 94 at 20–21]. Second, it failed to produce any reason why the preamble is relevant to the litigation in its responsive claim construction brief. [ECF No. 97 at 16–18]. Third, Power Packer did not articulate why the dispute was material at the Markman hearing, instead relying on general notions of making sure the patent was bounded by design choices. Power Packer has not identified the issues in the litigation that would be affected by the preamble of claim I or why it needs to be construed beyond the term proportional. Until that time, the Court declines to address the issue.
C. Undisputed Terms
A trial court need not construe terms the meanings of which the parties do not dispute. O2 Micro Int'l. , 521 F.3d at 1362. The parties have agreed to the meaning of two terms. See [ECF Nos. 94; 95; 97; 98]. First, they agree that the term "flow-regulating valve" means "a valve that monitors, controls or regulates the amount of fluid passing through it without directional control capabilities." [ECF Nos. 94 at 22; 95 at 9]. Second, they agree that the term "directional valve" is defined as "a valve that directs or prevents flow through selected passages." [ECF Nos. 94 at 21; 95 at 9]. Given this agreement, the Court need not interpret these terms.
IV. CONCLUSION
For the reasons above, the Court defines "closed" as its plain and ordinary meaning akin to regulate or restrict. It defines "blocked" to mean "impeded." "Neutral position" should receive its plain and ordinary meaning as described in the patent. Finally, it is not necessary to address whether Claim I's preamble beyond the term proportional limits the patent because the record, at this stage, does not explain why doing so addresses a material or relevant dispute.
IT IS SO ORDERED.