Opinion
Case No. 1:12-cv-931
11-25-2014
J&M MANUFACTURING COMPANY, INC., Plaintiff, v. UNVERFERTH MANUFACTURING COMPANY, INC., Defendant.
Claim Construction Order
Plaintiff J&M Manufacturing Company, Inc. ("J&M") filed a complaint alleging Defendant Unverferth Manufacturing Company, Inc. ("Unverferth") has infringed and continues to infringe United States Patent No. 8,047,757, entitled "Grain Cart Having a Single Auger Discharge Conveyor" ("the '757 patent). (See Doc. 23 at Page ID # 200-01; Doc. 23-1 at Page ID # 204.) Defendant Unverferth filed a counterclaim seeking a declaratory judgment that it has not infringed and is not now infringing, contributorily infringing, or inducing infringement of any claim of the '757 patent. (See Doc. 25 at Page ID # 260-61.) Unverferth also seeks a declaratory judgment that the claims of the '757 patent are invalid. (See id.)
This matter is now before the Court for construction of the '757 patent pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). The parties exchanged the claim terms that are in dispute and submitted to the Court a Joint Claim Construction and Prehearing Statement, pursuant to Local Patent Rule 105.2(d). (Doc. 29.) The parties also filed claim construction briefs. (Docs. 32, 33, 36, and 37.) The Court held a Markman hearing on January 28, 2014 during which counsel for the parties presented arguments in support of their respective construction of the claims at issue. Following the hearing, the parties filed an Amended Joint Disputed Claim Terms Chart (Doc. 48) and additional demonstrative exhibits, which were discussed at an April 24, 2014 conference. Relying on the parties' briefs, evidence and oral arguments, the Court now shall construe each of the disputed terms.
I. THE PATENT
The '757 patent, dated November 1, 2011 and naming Plaintiff J&M as the assignee, concerns a grain wagon or cart that is pulled by a tow tractor for the purpose of transporting grain from a harvesting combine in a field to an open top semi-trailer for further transportation to a grain storage elevator. (See Doc. 23-1 at Page ID # 204.) As Defendant described in its Opening Claim Construction Brief, grain carts have continually evolved to allow for easier and more efficient use:
Basic grain cart design involves a container (for holding grain), wheels or tracks that allow for easy transport of the container, and a conveyor with an auger/elevator inside and a discharge spout on the end. The grain moves from the container, up the conveyor, and shoots out of the spout and into the transport device. Because grain cart conveyors need to be long enough to reach the distance from the grain cart to the transport device, but also short enough so that the grain carts can be stored in barns and sheds and transported on roads, conveyors are generally constructed as two parts-an upper conveyor and a lower conveyor-connected by a hinge. Determining the best design for a conveyor and hinge, such that there is maximum reach but confined storage, has been the subject of much R&D attention by those in the grain cart industry.(Doc. 32 at Page ID # 406.)
The abstract of the '757 patent describes the claimed grain cart invention as follows:
A grain cart has a wheel supported frame on which is mounted an open top container having inclined bottom walls and including a single discharge auger conveyor having a lower section extending from a sump for the container adjacent a front left inclined comer portion of the container. The auger conveyor has an
extended upper section supported by a hinge assembly having a pivot axis offset and askewed at an acute angle from the auger axis. The hinge assembly provides for pivoting the upper conveyor section between an inclined grain discharge position projecting upwardly, laterally outwardly and forwardly from the container and a stored position inclined downwardly at a substantial angle from the hinge assembly in front of the container. In the stored position, the grain discharge outlet is located lower than the top surfaces of the wheels and does not project laterally beyond the right side wall of the container.(Doc. 23-1 at PageID 204.) The patent specification includes eight figures representing a preferred embodiment of the patented invention and a detailed description of the illustrated embodiment. (Id. at 205-11.) The last paragraph of the description clarifies that "[w]hile the form of grain cart herein described constitutes a preferred embodiment of the invention, it is to be understood that the invention is not limited to this precise form of grain cart, and that changes made therein without departing from the scope and spirit of the invention as defined in the appended claims." (Id. at 210-11.)
The parties current dispute concerns the construction of several terms in two (Claims 1 and 2) of the three claims contained in the 757 patent. Claims 1 and 2 of the patent state as follows:
1. A grain cart adapted to be pulled by a tow tractor for transferring grain from a combine in a field to an open-top semi-trailer, said cart comprising
a frame supported by a set of wheels and having a front hitch adapted to be pivotally connected to the tractor,
a container supported by the said frame for receiving a volume of grain and having an inclined front wall portion, a left side wall and a right side wall,
said grain cart having only a single auger conveyor including an inclined lower conveyor section and an upper conveyor section having an outer end portion with a grain discharge spout,
each said conveyor section including a power driven auger having a helical flight and rotatable on an axis within a tubular auger housing,
said inclined lower conveyor section extending within said container adjacent said inclined front wall portion and having an inlet positioned to receive grain from said container,
(Doc. 23-1 at PageID 211.) The specific terms the parties have asked the Court to construe and the parties proposed definitions of those terms are addressed below. II. MARKMAN HEARING STANDARDSsaid upper conveyor section supported by a hinge assembly adjacent a front left corner portion of said container for folding movement on a pivot pin between a retracted stored position and an inclined grain discharge position projecting upwardly, laterally outwardly and forwardly from said container,2. A grain cart as defined in claim 1 wherein said hinge assembly includes a first hinge member rigidly connected to said housing of said lower conveyor section, a second hinge member rigidly connected to said housing of said upper conveyor section, and said hinge pin pivotally connects said first hinge member to said second hinge member and provides for pivoting said upper conveyor section on said pivot axis between said stored position and said grain discharge position.
said upper conveyor section including said outer end portion with said grain discharge spout having a combined length causing said outer end portion with said discharge spout to extend beyond said right side wall of said container when said upper conveyor section moves on said pivot pin between said discharge position and said storage position,
said hinge assembly connecting said upper conveyor section to said lower conveyor section and providing for pivoting said upper conveyor section on said pivot pin having a pivot axis extending offset and askewed at an acute angle relative to a plane perpendicular to said axis of said auger in said lower conveyor section and also offset and askewed at an acute angle relative to a plane perpendicular to said axis of said auger in said upper conveyor section,
a hydraulic cylinder connected to move said upper conveyor section between said stored position and said grain discharge position, said upper conveyor section of said single auger conveyor in said stored position extending downwardly forward of said inclined front wall portion and at a substantial angle greater than thirty five degrees relative to a horizontal reference plane, and
said outer end portion with grain discharge spout of said upper conveyor section in said stored position being located below upper surfaces of said wheels and adjacent a vertical reference plane contacting said right side wall of said container.
The Federal Circuit has explained that "[i]t is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to which the patentee is entitled to the right to exclude.'" Phillips v. AWH Corp., 415 F. 3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Consequently, the meaning and scope of a patent's claims lie at the heart of any patent dispute.
The purpose of a Markman hearing is to ascertain the meaning of the patent's claims so that it is clear precisely what has been patented and, by consequence, the protections the patent affords the patent holder. Phillips, 415 F.3d at 1312; see also Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995) ("When a court construes the claims of the patent . . . the court is defining the federal legal rights created by the patent document."), aff'd, 517 U.S. 370 (1996). There is no "rigid algorithm for claim construction." Phillips, 415 F.3d at 1324. Rather, in construing the meaning of a patent's claims, the Court is guided by a set of principles that the Federal Circuit has described as follows:
The claim terms are generally given their ordinary and customary meaning. The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. Importantly, 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. In examining the specification for proper context, however, this court will not at any time import limitations from the specification into the claims.Varco, L.P. v. Pason Sys., USA Corp., 436 F.3d 1368, 1372-73 (Fed. Cir. 2006) (internal quotations and citations omitted).
Of considerable import to claim construction is the intrinsic evidence—the claim language, the specification, and the prosecution history as applicable. Vitrionics Corp. v. Conceptronic, 90 F.3d 1576, 1582-83 (Fed. Cir. 1996). When this intrinsic evidence provides an unambiguous description of the scope of the invention, reliance on extrinsic evidence is generally improper. Id.
Although less significant than intrinsic evidence, extrinsic evidence is still of value to claim construction when necessary. Phillips, 415 F.3d at 1317 (citing Markman, 52 F.3d at 980). This latter category encompasses such things as expert and inventor testimony, as well as texts such as treatises and dictionaries. Id.
The starting point in claim construction therefore lies with the language of the claims themselves. Purdue Pharma L.P. v. Endo Pharm., Inc., 438 F.3d 1123, 1135-36 (Fed. Cir. 2006). Generally, the terms of a patent should be construed consistently throughout the patent. Phillips, 415 F.3d at 1314; Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) ("[A] claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent."). In considering a patent's language, a court should apply the plain meaning rule, presumptively giving claim terms their ordinary, plain meaning. Innova, 381 F.3d at 1115.
A court may depart from a term's plain meaning if the patentee has acted as a lexicographer or otherwise limited the scope of the invention through a disclaimer or disavowal in the specification or prosecution history. Phillips, 415 F.3d at 1316. Nonetheless, while claims should be read in view of the specification, it is improper to simply import limitations from the specification into the claims. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004). As the Federal Circuit has explained, it is "not enough that the only embodiments, or all of the embodiments, contain a particular limitation to limit a claim term beyond its ordinary meaning." Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). "[E]ven if a specification has only one embodiment, its claims will not be confined to that example 'unless the patentee has demonstrated a clear intention to limit the claim scope using words or expression of manifest exclusion or restriction.'" Aria Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d 1296, 1301 (Fed. Cir. 2013) (quoting Liebel-Flarsheim, 358 F.3d at 906).
Recognizing that courts sometimes walk a fine line in applying that standard, the Federal Circuit provided the following guidance:
To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the
specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so. See Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1533 (Fed. Cir. 1987). One of the best ways to teach a person of ordinary skill in the art how to make and use the invention is to provide an example of how to practice the invention in a particular case. Much of the time, upon reading the specification in that context, it will become clear whether the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive. See [SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d, 1337, 1341 (Fed. Cir. 2001)]. The manner in which the patentee uses a term within the specification and claims usually will make the distinction apparent. See Snow v. Lake Shore & M.S. Ry. Co., 121 U.S. 617, 630 [] (1887) (it was clear from the specification that there was "nothing in the context to indicate that the patentee contemplated any alternative" embodiment to the one presented).Phillips, 415 F.3d at 1323-24.
In the end, there will still remain some cases in which it will be hard to determine whether a person of skill in the art would understand the embodiments to define the outer limits of the claim term or merely to be exemplary in nature. While that task may present difficulties in some cases, we nonetheless believe that attempting to resolve that problem in the context of the particular patent is likely to capture the scope of the actual invention more accurately than either strictly limiting the scope of the claims to the embodiments disclosed in the specification or divorcing the claim language from the specification.
Cognizant of the principles governing claim construction, the Court shall now address each disputed term in turn.
III. CLAIM CONSTRUCTION ANALYSIS
A. First Disputed Term
| Claim | Disputed Claim Term | J&M's Proposed Construction | Unverferth's Proposed Construction | Court's Ruling |
| "[Claim 1.] A. . . grain cart having only a single auger conveyor including an inclined lower conveyor section and an upper conveyor section having an outer end portion with a grain discharge spout, each said conveyor section including a power driven auger having a helical flight and rotatable on an axis within a tubular auger housing, said inclined lower conveyor section extending within said container adjacent said inclined front wall portion and having an inlet positioned to receive grain from said container. . .." | inclined lower conveyor section | No construction necessary. The inclined lower conveyor section is the conveyor section below the upper conveyor section. | inclined tubular housing enclosing a lower auger | No construction necessary. |
Defendant Unverferth argues that term "inclined lower conveyor section" requires construction, arguing that the Court must further define the term to avoid further dispute over another term, specifically the meaning of the term "extending within said container adjacent said inclined front wall portion." In other words, Defendant argues the Court cannot construe the latter term without first construing the former term. Based on the assumption that construction is necessary, Defendant attempts to construe the term based on the description of the preferred embodiment in the specification. There, the illustrated embodiment is described as including "a lower conveyor section 72 formed by a tubular or cylindrical sheet metal housing 74 and enclosing an auger (76)." (Doc. 23-1 at PageID 210.) Accordingly, Defendant argues that the claim term "inclined lower conveyor section" should be construed to mean an "inclined tubular housing enclosing a lower auger."
Plaintiff J&M rejects Defendant's request for construction of this term, arguing instead that the ordinary meaning of that term is sufficient to define J&M's patent rights. J&M views Unverferth's proposed construction as an attempt to limit a claim term via reference to the preferred embodiment by adding "elements into the claim that are simply not there — specifically, a 'tubular housing' and 'enclosing a lower auger.'" (Doc. 33 at PageID 600.)
The Court finds that Defendant's proposed construction is unnecessary and potentially limits the patent in a manner not contemplated by the claim. The proposed construction is unnecessary because Claim 1 already describes "each said conveyor section" as "including a power driven auger having a helical flight and rotatable on an axis within a tubular auger housing." Examining the term "inclined lower conveyor section" in the context of that description of "conveyor section" reveals that Defendant's proposed construction is at best redundant. At worst, the proposed construction unnecessarily limits the disputed term and potentially causes further confusion by leaving open the definition of "enclosing." Given the parties current dispute over the meaning of "extending within" and "located below" in connection with other claim terms, the Court has little doubt that adoption of Defendant's proposed construction would simply lead to another dispute over the definition of "enclosing." For example, would that term mean "entirely enclosing" or "partially enclosing?"
In simple terms, Claim 1 describes a grain cart containing a single auger conveyor composed of two conveyor sections attached by a hinge. The term "inclined lower conveyor section" needs no further construction. It refers simply to the lower section of the two-section conveyor.
B. Second Disputed Term
| Claim | Disputed Claim Term | J&M's Proposed Construction | Unverferth's Proposed Construction | Court's Ruling |
| "[Claim 1.] A grain cart . . . comprising . . . a container . . . having an inclined front wall portion, a left side wall and a right side wall, said grain cart having only a single auger conveyor including an inclined lower conveyor section and an upper conveyor section having an outer end portion with a grain discharge spout, each said conveyor section including a power driven auger having a helical flight and rotatable on an axis within a tubular auger housing, said inclined lower conveyor section extending within said container adjacent said inclined front wall portion and having an inlet positioned to receive grain from said container . . .." | extending within said container adjacent said inclined front wall portion | The inclined lower conveyor section is next to, close to or in the vicinity of the inclined front wall of the container and extends inside the container so that its inlet is within the container. It is sufficient if any portion of the lower conveyor section extends within the container. There is no requirement that the entire lower conveyor section be located within the container. | extending inside the container next to or adjoining the inclined front wall portion of the container | Some portion, however small, of the inclined lower conveyor section extends inside the container next to or adjoining the inclined front wall portion of the container so that its inlet is positioned to receive grain from the container. |
Though not immediately clear from the parties' claim construction briefs, the parties' representations at the Markman hearing revealed that the dispute over the construction of the term "extending within said container adjacent said inclined front wall portion" centers primarily on the words "within" and "adjacent" and the extent to which those words should be interpreted to require all or only a portion of the lower conveyor section to extend within the grain cart. Viewing the parties proposed constructions side by side, they appear to consistently define "within" to mean "inside."
Their constructions begin to diverge with regard to the definition of "adjacent." Plaintiff J&M interprets the "adjacent said inclined front wall" description to mean that the lower conveyor section must be "next to, close to or in the vicinity of the inclined front wall." Defendant Unverferth proposes a narrower construction, one that defines "adjacent" to mean "next to or adjoining." In support of its proposed construction, Defendant points to figure 2 in the patent, which shows the inclined lower conveyor section running next to or adjacent to the inclined front wall portion of the container. The specification also states that the inclined lower conveyor section in the illustrated embodiment is "mounted on the container adjacent an inclined front bottom wall of the container," and that "[a]s shown in FIG. 2, the inclined lower section 72 of the conveyor 70 extends along or adjacent an inclined front left corner portion of the container 40." (Doc. 23-1 at PageID 209-10 (emphasis added).) Reading the phrase "adjacent to" in the context of the specification, the Court finds that J&M's inclusion of the phrase "in the vicinity of" in its proposed construction improperly broadens the scope of the term. The phrase "adjacent to" is more accurately defined by Defendant Unverferth, whose proposed construction not only more closely approximates the plain meaning of "adjacent to," but also is consistent with the specification without improperly limiting the claim to the precise embodiment described in the specification.
Plaintiff expressed concern that the term "next to" in Defendant's proposed construction will be interpreted to mean the lower conveyor section must be "physically joined" to the inclined front wall portion. (See Doc. 33 at PageID 603-04.) The Court does not interpret "next to" in that manner.
The third and most important question as to this term is the extent and manner to which it requires the lower conveyor section to extend within the container. To answer this question, Plaintiff J&M proposed construction would clarify that while the lower conveyor section must be adjacent to the inclined front wall, there is no requirement that it run along the inside of the container adjacent to the front wall. That may be what is depicted in the illustrated embodiment, but Plaintiff maintains the claim language is broader in scope and requires only that some portion of the lower conveyor section extend within the container. For example, the lower conveyor section may run along the outside of the front wall of the container, with its inlet extending within the container at a point adjacent to the front wall, and still be described as "extending within said container adjacent said inclined front wall portion." Thus, it is sufficient if any portion, even simply the inlet, of the lower conveyor section extends within the container, and there is no requirement that the entire lower conveyor section be located within the container.
J&M's reading of the claim term is sound, particularly when reading the disputed term in conjunction with the language immediately following the term—"and having an inlet positioned to receive grain from said container." First, the Court agrees with J&M that that claimed patent does not require that the entire lower conveyor section be located within the container. Such a limitation is not supported by the claims or the specification and in fact would clash with the illustrated embodiment, which as seen in figures 4, 6, and 7, shows the lower conveyor section extending, albeit slightly, out from the container. (Doc. 23-1 at PageID 206-07.) Second, the only instruction Claim 1 gives as to how much of the lower conveyor section must extend within the container is the statement that the conveyor's "inlet" must be "positioned to receive grain from said container."
The Court also has reviewed the prosecution history cited by Defendant (see Doc. 32 at PageID 416), and finds that when the statements Defendant points out are read in context, they do not support the proposition that the lower conveyor section in this patented grain cart must be housed entirely within the container. Instead, J&M merely was attempting to demonstrate that the claimed invention differed from prior art because the two previous designs had a dual auger system as opposed to a single auger system. In one prior design, one auger extended within the container and a second foldable auger, containing a lower and upper conveyor section, connected to the first auger outside of the cart so that both the lower and upper conveyor sections were located entirely outside that cart. In contrast, the invention claimed in the '757 patent contains only a single foldable auger, a design made possible by positioning the lower conveyor section so that it extends within the container. (See Doc. 32-7 at PageID 497; Doc. 32-10 at PageID 558-69.) In the other design, no auger extended within the container. Rather, it ran beneath the container, and an opening in the container allowed grain to fall into the auger. (Id.)
Nevertheless, while the Court agrees in general with J&M's argument, the Court also finds it necessary to alter Plaintiff's proposed language to reflect that the lower conveyor section must adjacent to the front wall portion of the container at the point where it actually extends within the container. The Court also finds that including the phrase "so that its inlet is within the container" potentially limits the scope of the claim, which requires only that the inlet be positioned to receive grain from the container. The claim could, for example encompass a design in which the lower conveyor section extends into the container adjacent to the front wall and then "In other words, the Court construes the term "extending within said container adjacent said inclined front wall portion" to mean "some portion, however small, of the inclined lower conveyor section extends inside the container next to or adjoining the inclined front wall portion of the container so that its inlet is positioned to receive grain from the container."
C. Third Disputed Term
| Claim | J&M's Proposed Construction | Unverferth's Proposed Construction | Court's Ruling | |
| "[Claim 1.] A grain cart . . . having only a single auger conveyor including an inclined lower conveyor section and an upper conveyor section . . ., said upper conveyor section supported by a hinge assembly adjacent a front left corner portion of said container for folding movement on a pivot pin between a retracted stored position and an inclined grain discharge position projecting upwardly, laterally outwardly and forwardly from said container, . . . said hinge assembly connecting said upper conveyor section to said lower conveyor section and providing for pivoting said upper conveyor section on said pivot pin having a pivot axis extending offset and askewed at an acute angle relative to a plane perpendicular to said axis of said auger in said lower conveyor section and also offset and askewed at an acute angle relative to a plane perpendicular to said axis of said auger in said upper conveyor section . . .." "[Claim 2.] A grain cart as defined in claim 1 wherein said hinge assembly includes a first hinge member rigidly connected to said housing of said lower conveyor section, a second hinge member rigidly connected to said housing of said upper conveyor section, and said hinge pin pivotally connects said first hinge member to said second hinge member and provides for pivoting said upper conveyor section on said pivot axis between said stored position and said grain discharge position." | J&M's proposed disputed term: hinge assembly Unverferth's proposed disputed term: hinge assembly. . . for folding movement on a pivot pin between a retracted position and an inclined grain discharge position projecting upwardly, laterally, outwardly, and forwardly from said container [and]. . . providing for pivoting said upper conveyor section on said pivot pin having a pivot axis extending offset and askewed at an acute angle relative to a plane perpendicular to said axis of said auger in said lower conveyor section and also offset and askewed at an acute angle relative to said axis of said auger in said upper conveyor section | parts forming a hinge | two trapezoid-shaped hinge plates, each hinge plate is at an obtuse angle relative to the end plate of a conveyor section, and a pivot pin connecting the hinge plates | parts forming a hinge |
The parties dispute not only the ultimate construction of the proposed term, but also the precise nature of the term for which construction is sought.
The primary dispute as to the third term is whether "hinge assembly" is simply "parts forming a hinge" (as Plaintiff suggests) or as means-plus-function language (as Defendant suggests). The import of the designation of a claim as a so-called "means-plus-function" claim pursuant to 35 U.S.C. § 112(f) (previously "35 U.S.C. § 112 ¶ 6") is that if such a claim does not recite sufficient structure, the patentee is limited to the structure disclosed in the specification and its equivalents. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002).
Section 112(f) provides that:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."This paragraph 'allows a patentee to recite a function to be performed as a claim limitation rather than reciting structure or materials for performing that function.'" Baran v. Med. Device Technologies, Inc., 519 F. Supp. 2d 698, 704 (N.D. Ohio 2007) (quoting Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1321 (Fed. Cir. 2003)). The use of certain language in the patent may signal the intention to invoke the statutory mandates for means-plus-function clauses: "A claim limitation that actually uses the word "means" will invoke a rebuttable presumption that § 112 ¶ 6 applies. By contrast, a claim term that does not use "means" will trigger the rebuttable presumption that § 112 ¶ 6 does not apply." CCS Fitness, Inc., 288 F.3d at 1369 (internal citations omitted).
In the instant case, Claims 1 and 2 do not phrase the "hinge assembly" limitations in means-plus-function language, thereby triggering the rebuttable presumption that § 112(f) does not govern. However, a party seeking to rebut that presumption can do so if it demonstrates that the claim term (a) fails to recite sufficiently definite structure or (b) recites a function without reciting sufficient structure for performing that function. Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1372 (Fed. Cir. 2003). The Federal Circuit has identified a number of guidelines to consider in determining whether a party meets that burden. First, for a claim to recite sufficiently definite structure, the claim limitation need not "connote a precise physical structure." Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000) (emphasis added). Second, "[a]s an aid in determining whether sufficient structure is in fact recited by a term used in a claim limitation, this court has inquired into whether the term, as the name for structure, has a reasonably well understood meaning in the art." Id. at 880-81 (internal quotation marks omitted). Finally, "the fact that a particular mechanism"—in this case a hinge assembly—"is defined in functional terms is not sufficient to convert a claim element containing that term into a 'means for performing a specified function' within the meaning of 112(6)." Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996). As the Federal Circuit has explained:
Many devices take their names from the functions they perform. The examples are innumerable, such as "filter," "brake," "clamp," "screwdriver," or "lock." Indeed, several of the devices at issue in this case have names that describe their functions, such as "graspers," "cutters," and "suture applicators."Id.
If the Court determines that § 112(f) applies, the construction will be governed by the guidelines specified in the statute: "such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. § 112(f). If, on the other hand, § 112(f) does not apply, then the Court will construe the "hinge assembly" limitations by applying the more generally applicable claim construction guidelines discussed supra in Section II.
Defendant argues that the "'hinge assembly' limitations in claim 1 of the '757 patent invoke § 112(f) because they recite functions without reciting sufficient structure for performing those functions. (Doc. 32 at Page ID 419.) Plaintiff, on the other hand, argues that "hinge assembly" should be construed simply as "parts forming a hinge," and that the term is not a means-plus-function element. (See Doc. 33 at Page ID 605-08.)
The burden lies with Defendant Unverferth to set forth evidence to overcome the presumption against application of § 112(f). See Apex, 325 F.3d at 1372 ("If the party who must bring forth evidence fails to proffer sufficient evidence to meet its burden, the presumption, either for or against the application of §112, P6, prevails."). Unverferth cites two main bases to support its argument: (1) because there are three specific functions recited in being performed by the hinge assembly and there is insufficient structure disclosed in claim 1 for performing all three of the functions; and (2) because during prosecution J&M argued that it was not until applicant conceived of the specific hinge assembly set forth in the claims and in the figures that the three claimed functions were performed.
As to the first basis, Unverferth argues that Claim 1 sets forth three functions of the hinge assembly: (1) folding between a retracted stored position and an inclined grain discharge position projecting upwardly, laterally outwardly and forwardly from the container; (2) connecting the lower and upper conveyor sections; and (3) pivoting the upper conveyor section on an offset and askewed pivot pin. According to Unverferth, Claim 1 fails to describe the actual structure of the hinge assembly that would enable the performance of those functions, particularly the first and third functions. In other words, not every hinge will allow for a discharge position projecting upwardly, laterally outwardly and forwardly from the container or pivot the upper conveyor section on an offset and askewed pivot pin. Those functions, Unverferth argues, require a particular form of hinge assembly, the structure of which is not sufficiently recited in Claim 1. Though Claim 1 describes a pivot pin, it does not describe the other parts of the hinge assembly, namely the hinge plates, which Defendant argues are essential to the performance of the above-described functions.
Defendant argues that the instant case is analogous to Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206 (Fed. Cir. 1998), one of the few cases in which the Federal Circuit has found that a party successfully rebutted a presumption against means-plus-function construction. In that case, the court held that the terms "lever moving element" and "movable link member" were recited in means-plus-function form in a patent for an electronic dial combination lock because the limitations at issue did not provide any structure. Id. at 1213-15. With regard to the term "lever moving element," the court found no evidence of a reasonably well-understood meaning in the relevant art. Id. at 1213-14. Noting that the only term in "lever moving element" that could denote structure is "moving element," the court then concluded that:
[A] "moving element" could be any device that can cause the lever to move. LaGard's claim, however, cannot be construed so broadly to cover every conceivable way or means to perform the function of moving a lever, and there is no structure recited in the limitation that would save it from application of section 112, ¶ 6.Id. at 1214. Turning to the next term, the court found that "movable link member" similarly lacked a reasonably well-defined meaning and lacked sufficient structure to perform the following two functions described in the claim: '(1) for holding the lever out of engagement with the cam surface before entry of a combination, and (2) for releasing the lever after entry of the combination." Id. at 1215 (internal quotation marks omitted).
Plaintiff disagrees that this case is similar to Mas-Hamilton Group, and cites several cases it believes to be more analogous to the case at hand. For example, Plaintiff relies heavily on Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1362 (Fed. Cir. 2004), wherein the Federal Circuit distinguished Mas-Hamilton Group as an "exceptional case." In Lighting World, the court addressed the construction of the term "connector assembly" as used in the claim element "a connector assembly for connecting each pair of adjacent support members, said connector assembly being pivotally connected to said pair of adjacent support members." Id. at 1359. The Federal Circuit began its analysis with the presumption that § 112(f) did not apply "[b]ecause the 'connector assembly' limitation [did] not contain the term 'means.'" The court then concluded that the district court erred in finding that the defendant had overcome that presumption, noting that the district court based its finding on the "unduly restrictive" proposition that "a claim limitation must identify a specific structure and not use a generic term that includes a wide variety of structures." Id. In rejecting that approach, the Federal Circuit stated:
In considering whether a claim term recites sufficient structure to avoid application of section 112 ¶ 6, we have not required the claim term to denote a specific structure. Instead, we have held that it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.Id. at 1359-60. Citing various dictionary definitions, the court found that the term "connector" has a "reasonably well-understood meaning as the name for a structure, even though the structure is defined in terms of the function it performs." Id. at 1361. Accordingly, the court held that
in the context of claim 1, the term "connector assembly" means a unit that joins, fastens, or links each pair of adjacent support members. The fact that more than one structure may be described by that term, or even that the term may encompass a multitude of structures, does not make the term "connector assembly" any less a name for structure.Id. at 1361.
The Court finds that Claim 1 recites sufficient structure and therefore does not invoke § 112(f). First, the term "hinge" connotes a sufficiently definite structure that is reasonably well-understood in the mechanical arts as a device that takes its name from the function it performs. For example, "hinge" is defined by Webster's Third New International Dictionary 1071 (1993) as "a jointed or flexible device on which a door, lid, or other swinging part turns," and by Webster's II New Riverside University Dictionary 583 (1984) as "[a] jointed or flexible device that allows the turning or pivoting of a part, as a door or lid, on a stationary frame." Funk & Wagnalls New International Dictionary of the English Language 597 (1984) defines "hinge" to mean "a device allowing one part to turn on another: the hook or joint on which a door or shutter swings or turns," or a "device consisting of two metal plates joined by a rod, used as to connect a lid to a box." Consistent with those definitions, the term "hinge" as used in the context of the '757 patent means a jointed device that allows the pivoting of a part, and the term refers to a much narrower, more readily identifiable category of devices than does "element" or "member," both of which terms are so broad as to potentially encompass any conceivable structure. The term "hinge assembly" is therefore more like the "connector assembly" of Lighting World than the "lever moving element" or "movable link member" of Mas-Hamilton. The mere fact that Claim 1 does not outline a precise physical structure for the hinge assembly is not sufficient to invoke § 112(f). See Watts, 232 F.3d at 880; Lighting World, 382 F.3d at 1359-60.
Second, as to the question of whether Claim 1 recites a sufficient structure for performing the functions described in the claim, the Court finds that by focusing only on the phrase "hinge assembly," the Defendant ignores other key features of the structure recited in the claim. The structure recited is not simply a "hinge assembly," but rather a "hinge assembly [containing a] pivot pin having a pivot axis extending offset and askewed at an acute angle relative to a plane perpendicular to said axis of said auger in said lower conveyor section and also offset and askewed at an acute angle relative to a plane perpendicular to said axis of said auger in said upper conveyor section." The actual hinge assembly disclosed in Claim 1 is capable of performing all three of the functions described by Defendant, and Defendant has not shown that any other unidentified features of the "hinge assembly" are necessary to perform those functions. In other words, the Court finds no support for Defendant's suggestion that the claim fails to recite sufficient structure because it does not state a precise shape for the hinge plates, and the Court views that argument as an attempt to unduly limit the scope of the claim limitation to the preferred embodiment. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) ("Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." (internal quotation marks omitted)).
The Court declines to address in detail Defendant's second basis for invoking § 112(f), that during prosecution J&M argued that it was not until applicant conceived of the specific hinge assembly set forth in the claims and in the figures that the three claimed functions were performed. Because the Court finds that the structure recited in Claim 1 is sufficient to perform the corresponding functions, Defendant's argument as to the import of the prosecution history is unpersuasive.
The Court therefore finds that the term "hinge assembly" needs no further definition than that proposed by Plaintiff.
D. Fourth Disputed Term
| Claim | Disputed Claim Term | J&M's Proposed Construction | Unverferth's Proposed Construction | Court's Ruling |
| "[Claim 1.] A grain cart . . . having only a single auger conveyor including an inclined lower conveyor section and an upper conveyor section ..., said upper conveyor section supported by a hinge assembly adjacent a front left corner portion of said container for folding movement on a pivot pin between a retracted stored position and an inclined grain discharge position projecting upwardly, laterally outwardly and forwardly from said container . . .." | inclined grain discharge position projecting upwardly, laterally outwardly and forwardly from said container | inclined grain discharge position projecting upwardly, laterally outwardly and forwardly away from or with respect to the container | inclined grain discharge position wherein the upper conveyor section originates at the container and projects upwardly, laterally outwardly and forwardly therefrom | inclined grain discharge position projecting upwardly, laterally outwardly and forwardly away from or with respect to the container |
Both parties' proposed constructions for the fourth term focus on the phrase "from the container." Defendant interprets that phrase to mean that "the upper conveyor section originates at the container and projects upwardly, laterally outwardly and forwardly therefrom." Defendant argues that its construction comports with the plain and ordinary meaning of the term "from the container" and is consistent with the disclosure in the specification, whereas J&M's proposed construction impermissibly broadens the scope of the claim by changing the word "from" to "away from or with respect to."
The Court cannot accept Defendant's proposed construction of the disputed term because it would operate to exclude the illustrated embodiment from the scope of the claim. The Federal Circuit has cautioned that "a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct." On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004), quoted in Accent Packaging v. Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013). As seen in figures 6 and 7 of the illustrated embodiment, the upper conveyor section does not originate at the container in that embodiment. (Doc. 23-1 at PageID 207.) Rather, it originates at the hinge assembly connecting the lower and upper conveyor sections.
Were it not for Defendant's proposed narrow construction of the fourth disputed term, the Court likely would find that no construction is necessary. Indeed, the plain language of the claim sufficiently describes the directional positioning of the upper conveyor when it is in an inclined grain discharge position. However, in light of Defendant's argument, the Court finds it necessary to clarify that the upper conveyor section need not originate at the container. Plaintiff's proposed construction accomplishes that goal without significantly broadening the meaning of the original language. Accordingly, the Court finds Plaintiff's construction is sound.
E. Fifth Disputed Term
| Claim | J&M's Proposed Construction | Unverferth's Proposed Construction | Court's Ruling | |
| "[Claim 1.] A grain cart . . . having only a single auger conveyor including an inclined lower conveyor section and an upper conveyor section ..., said upper conveyor section supported by a hinge assembly . . ., said hinge assembly connecting said upper conveyor section to said lower conveyor section and providing for pivoting said upper conveyor section on said pivot pin having a pivot axis extending offset and askewed at an acute angle relative to a plane perpendicular to said axis of said auger in said lower conveyor section and also offset and askewed at an acute angle relative to a plane perpendicular to said axis of said auger in said upper conveyor section. . .. " | J&M's proposed disputed term: a pivot axis extending offset and askewed at an acute angle relative to a plane perpendicular to said axis of said auger in said [lower/upper] conveyor section Unverferth's proposed disputed terms: (i) a pivot axis extending offset . . . relative to [a plane perpendicular to said axis of said auger in said lower/upper conveyor section] (ii) a pivot axis extending . . . askewed at an acute angle relative to [a plane perpendicular to said axis of said auger in said lower/upper conveyor section] | the pivot axis is spaced from and is at an acute angle relative to a plane perpendicular to said axis of said auger in said [lower/upper] conveyor section | (i) a pivot axis displaced or spaced from [a plane perpendicular to the axis of the auger in the lower/upper conveyor section] (ii) a pivot axis turned or slanted at an acute angle relative to [the plane perpendicular to the axis of the auger in the lower/upper conveyor section] | No construction necessary. |
As with the third disputed term, the parties once again dispute the term or terms for which construction is sought.
The Court finds little if any meaningful difference between Plaintiff's and Defendant's proposed constructions of the fifth disputed term. Rather the proposed constructions appear to simply be different ways of stating the same principle. The crux of the parties dispute as to the language identified as the fifth disputed claim term appears to actually pertain to the interpretation of "a plane perpendicular to said axis of said auger in said [lower/upper] conveyor section." That particular term was identified by the parties as the sixth disputed term and is addressed below. As the Court finds no meaningful difference between the proposed constructions of the fifth disputed term, the Court finds that no construction is necessary.
F. Sixth Disputed Term
| Claim | Disputed Claim Term | J&M's Proposed Construction | Unverferth's Proposed Construction | Court's Ruling |
| "[Claim 1.] A grain cart . . . having only a single auger conveyor including an inclined lower conveyor section and an upper conveyor section ., said upper conveyor section supported by a hinge assembly . . ., said hinge assembly connecting said upper conveyor section to said lower conveyor section and providing for pivoting said upper conveyor section on said pivot pin having a pivot axis extending offset and askewed at an acute angle relative to a plane perpendicular to said axis of said auger in said lower conveyor section and also offset and askewed at an acute angle relative to a plane perpendicular to said axis of said auger in said upper conveyor section. . .. " | plane perpendicular to said axis of said auger in said [lower/upper] conveyor section | No construction necessary. | the flat surface defined by the end plate perpendicular to the axis of the auger in the lower/upper conveyor section | No construction necessary. |
With its proposed construction of the sixth disputed term, Defendant improperly attempts to transform a mere spatial reference into a concrete and fixed component of the claimed invention. Relying almost entirely on the illustrated or preferred embodiment depicted in the specification, Defendant argues that the Court should construe "plane perpendicular to said axis of said auger in said [lower/upper] conveyor section" to mean "the flat surface defined by the end plate perpendicular to the axis of the auger in the lower/upper conveyor section." To support its argument, Defendant argues that:
the specification even refers to the "planes perpendicular to each of the axes AI and A2" interchangeably with "each of the end plates." See [the '757 patent] at col. 3, 11. 54-59 ("[t]he hinge plates 102
and 106 are pivotally connected by a hinge pin 110 which has a pivot axis A3 offset and askewed at an acute angle relative to reference planes perpendicular to each of the axes A1 and A2 or extending at an acute angle or about fourteen degrees relative to each of the end plates.").(Doc. 32 at PageID 427.) The Court does not read the specification excerpts in the same manner as Defendant. Rather than using "planes perpendicular" interchangeably with "end plates," the specification actually distinguishes those terms, referring to the former as "reference" planes, suggesting that the term "plane" is used when attempting to create a spatial reference, whereas "end plates" refer to a physical component of the illustrated embodiment. The end plates in the illustration may be on a plane perpendicular to the axis of the augers, but it does not follow that the term "plane perpendicular" as used in Claim 1 should be narrowly construed to mean those precise end plates. In fact, the specification uses the term "plane" repeatedly as a special reference, as is demonstrated in the following examples:
• "In the stored position, the discharge outlet portion of the upper conveyor section does not project beyond a vertical plane extending adjacent the right side wall of the container and is preferably located below the top surfaces of the wheels supporting the cart." (Doc. 23-1 at PageID 209.)
• "As shown in FIG. 4, the wheels 65 project somewhat outwardly from corresponding vertical planes 67 defined by or adjacent the vertical side walls 47 and 48." (Id. at 210.)
• "In the stored position, the outlet of the discharge spout 93 is located below the top surfaces of the wheels 65 and does not extend horizontally beyond the vertical plane 67 contacting the right side wall 47 of the container 40." (Id.)In light of the repeated use of the term "plane" to denote a spatial position, the court declines to define "plane perpendicular to said axis of said auger in said [lower/upper] conveyor section" to refer to a concrete structure. Accordingly, the Court agrees with Plaintiff that no construction is necessary.
• "[T]he upper conveyor section 82 extends downwardly 65 from the hinge assembly at a substantial angle A (FIG. 3) from a horizontal plane P. (Id.)
As Plaintiff points out, there are an infinite number of planes perpendicular to the axis of the auger. The pivot axis may be offset and askewed relative to any one of them.
Notably, in contrast to this excerpt, the disputed claim language does not attempt to narrow the reference to "plane perpendicular" by specifying that it is "defined by or adjacent" and physical structure. If the patentee had intended to so define each referenced "plane perpendicular" he could have stated, for example, "a plane perpendicular to said axis of said auger in said lower conveyor section defined by or adjacent to a flat end plate at the top opening of the lower conveyor section."
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G. Seventh Disputed Term
| Claim | Disputed Claim Term | J&M's Proposed Construction | Unverferth's Proposed Construction | Court's Ruling |
| "[Claim 1.] A grain cart . . . having only a single auger conveyor including an inclined lower conveyor section and an upper conveyor section ...[,] said outer end portion with grain discharge spout of said upper conveyor section in said stored position being located below upper surfaces of said wheels and adjacent a vertical reference plane contacting said right side wall of said container." | said outer end portion with grain discharge spout of said upper conveyor section in said stored position being located below upper surfaces of said wheels | in the stored position, the outer end portion with the grain discharge spout of the upper conveyor section is positioned entirely or partially below upper surfaces of the wheels | in the stored position, the entire discharge outlet portion of the upper conveyor section is located below the upper surfaces of the wheels | in the stored position, the entire discharge outlet portion of the upper conveyor section is located below the upper surfaces of the wheels |
The parties' dispute as to the meaning of the term "said outer end portion with grain discharge spout of said upper conveyor section in said stored position being located below upper surfaces of said wheels" comes down to a single question: Does Claim 1 require that the entire discharge outlet or merely a portion of the outlet to lie below the upper surfaces of the wheels when the grain cart is in the stored position.
According to Defendant, without words describing how much below the upper surfaces of the wheels the spout should lie, the plain and ordinary meaning is that the spout is entirely below the upper surfaces of the wheels. Plaintiff, on the other hand, points out that Claim 1 does not include the word "entire," and therefore argues against reading that limitation into the claim. Plaintiff finds support for its argument in Cannon Rubber Ltd. v. First Years, Inc., 163 F. App'x. 870 (Fed. Cir. 2005), in which the Federal Circuit held that the term "diaphragm disposed in the body [of a breast pump]" should not be interpreted to require that the diaphragm be "disposed or mounted entirely within the body of the pump." Id. at 871, 873 (emphasis added). The Federal Circuit's analysis focused on 1) the plain meaning of the term "in the body" and 2) whether there was any justification for departing from the plain meaning. Id. at 875-76. In particular, the Federal Circuit stated:
[W]e note that the term "in" is a simple, non-technical term, and that under its ordinary meaning, a "diaphragm disposed in the body" includes both diaphragms contained entirely and partially in the body. See Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001) (recognizing that claim terms may not be technical terms of art, and do not require elaborate interpretation). For example, a trash bag is "in" a trashcan even though a portion of it is hanging outside of the trashcan.Id. at 875. The Federal Circuit also found no statement or disclaimer in the specification or the prosecution history indicating that the patentee intended to depart from the plain meaning of the term. Id.
While Plaintiff sets forth a strong argument, the Court believes that the term "below" while a simple, non-technical term, differs from the term "in" with respect to the extent to which something can be said to be below or in something. While it is true that reference to an object being "in" a container ordinarily can mean that the object is entirely or partially inside the container, typically a reference to an object being "below" another object or "below" a surface will be understood to mean the object is entirely below or beneath the surface. For example, when a swimmer swims "below" the surface, his or her whole body is submerged.
The Court therefore finds that as to the plain meaning of the term "below," Defendant sets forth the more persuasive argument. Accordingly, the Court adopts Defendant's proposed construction.
H. Eighth Disputed Term
| Claim | Disputed Claim Term | J&M's Proposed Construction | Unverferth's Proposed Construction | Court's Ruling |
| "[Claim 2.] A grain cart as defined in claim 1 wherein said hinge assembly includes a first hinge member rigidly connected to said housing of said lower conveyor section, a second hinge member rigidly connected to said housing of said upper conveyor section, and said hinge pin pivotally connects said first hinge member to said second hinge member and provides for pivoting said upper conveyor section on said pivot axis between said stored position and said grain discharge position." | hinge member | a member, or one of the parts, of the hinge assembly | a trapezoid-shaped hinge plate | hinge plate |
The term "hinge member" only appears in Claim 2 of the patent. Defendant argument that that the term should be construed to be "a trapezoid-shaped hinge plate" is similar to its argument that the term "hinge assembly" should be construed as a mean-plus-function term that is defined by the preferred embodiment. The Court has already rejected that argument above.
On the other hand, the Court finds that Plaintiff's proposed construction to be entirely unhelpful because when read in the context of Claim 2, "hinge member" clearly does not mean any part of the hinge assembly. It does not, for example mean the pivot pin, which is a part of the hinge assembly.
Accordingly, the Court construes the term "hinge member" to mean "hinge plate." This construction is consistent with the specification and prosecution history without unduly limiting the hinge assembly in Claim 2 to the preferred embodiment illustrated in the specification.
IV. CONCLUSION
The Court concludes that the foregoing claim constructions control. The parties shall therefore proceed in a manner consistent with the conclusions of this Order.
IT IS SO ORDERED.
S/Susan J. Dlott
Chief Judge Susan J. Dlott
United States District Court