Opinion
4:18-CV-9-BO
03-18-2022
TRUDELL MEDICAL INTERNATIONAL, Plaintiff, v. D R BURTON HEALTHCARE, LLC, Defendant.
MEMORANDUM AND RECOMMENDATION
BRIAN S. MEYERS UNITED STATES MAGISTRATE JUDGE
In this patent infringement action, Trudell Medical International (“Trudell” or “Plaintiff”) alleges that D R Burton Healthcare, LLC (“D R Burton” or “Defendant”) infringed United States Patent No. 9, 808, 588, entitled “Oscillating Positive Respiratory Pressure Device” (“'588 Patent” or “patent-in-suit”). The parties seek construction of ten disputed claim terms and phrases from the patent-in-suit. On October 22 and 23, 2020, the court conducted a claim construction hearing [DE-85, -86], pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and took the matter under advisement. Prior to the hearing, the parties submitted a joint claim construction statement [DE-89], opening claim construction briefs [DE-120, -123], and responsive claim construction briefs [DE-133, -134]. Pursuant to 28 U.S.C. § 636(b)(1), this matter was referred to the undersigned magistrate judge for a memorandum and recommendation concerning claim construction. [Public Entry dated 8/23/2021]. Upon consideration of the foregoing, as well as the arguments advanced at the hearing, the undersigned recommends construction of the disputed claim terms and phrases of the patent-in-suit as described below.
I. BACKGROUND
Plaintiff filed its complaint against Defendant on January 29, 2018, asserting direct and indirect infringement of the '588 Patent. [DE-1]. Plaintiff filed a First Amended Complaint on June 20, 2018 [DE-34], and on May 9, 2019, with leave of court, Plaintiff filed a Second Amended Complaint [DE-88]. Plaintiff produces and sells a medical device, the Aerobika, which practices the patent-in-suit. [DE-88] ¶¶ 4, 9. Plaintiff alleges infringement of twenty-five claims of the '588 Patent ([DE-88] ¶¶ 30, 41, 50) arising out of Defendant's “manufacture, importation, use, sale, offer for sale, and/or sale of oscillating positive expiratory pressure devices in the United States” ([DE-88] at 1). In its Answer and Affirmative Defenses and Counterclaims to the Second Amended Complaint, Defendant denies the validity of the '588 Patent and denies infringement. [DE-94] at 29-33.
Except where otherwise expressly noted, all citations to documents using the docket entry number [DE-] provided in the court's docket, including briefs and exhibits thereto, will specify the page number automatically assigned by the CM/ECF system, rather than the page number, if any, specified on the original document.
On May 10, 2019, the parties filed a joint claim construction statement. [DE-89]. In accordance with the joint claim construction statement, the parties identified a series of claim terms and phrases from the '588 Patent that are in dispute. The parties seek construction of ten disputed claim terms and phrases from the patent-in-suit. On November 22, 2019, Plaintiff and Defendant each filed an opening claim construction brief. [DE-120, -123]. On December 13, 2019, Plaintiff and Defendant each filed a responsive claim brief. [DE-133, -134]. The court conducted a Markman hearing on October 22 and 23, 2020 in Greenville, North Carolina. See [DE-185, -186].
II. LEGAL STANDARD AND GENERAL PRINCIPLES
A patent has three parts: a specification, at least one claim, and drawings if they are necessary to understand the invention. 37 C.F.R. §§ l.51(b); 1.81. “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same ....” 35 U.S.C. § 112(a). The patent concludes with “one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” Id. § 112(b). It is the claims, not the specification, that define the invention. Markman, 517 U.S. at 372; Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).
Analysis of infringement involves two steps. “The first step is determining the meaning and scope of the patent claims asserted to be infringed.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). “The second step is comparing the properly construed claims to the device accused of infringing.” Id. It is the first step, “commonly known as claim construction or interpretation, ” that is at issue at the present stage of this case. Id. The purpose of patent claim construction is to “to ascertain the meaning of a claim to one of ordinary skill in the art at the time of the invention.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1338 (Fed. Cir. 2005); see Markman, 52 F.3d at 976. When the parties raise an actual dispute regarding the proper scope of patent claims, the court must resolve that dispute. See Markman, 52 F.3d at 979 (holding that claim construction is a matter of law).
Words of a claim are generally given their ordinary and customary meaning (Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)), which is the meaning a term would have to a person of ordinary skill in the art at the time of the invention (Phillips, 415 F.3d at 1312-13). The person of ordinary skill in the art is deemed to read the claim term in the context of the particular claim in which the disputed term appears and in the context of the entire patent, including the specification and prosecution history. Phillips, 415 F.3d at 1313. “In some cases, the ordinary meaning of claim language . . . may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.” Id. at 1314. “In such circumstances, general purpose dictionaries may be helpful.” Id.
In many cases, the meaning of a claim term as understood by persons of skill in the art is not readily apparent. Id. In those cases, the court must look to “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. (quotation omitted). The claims “themselves provide substantial guidance as to the meaning of particular claim terms.” Id. The context in which a term is used in an asserted claim, the usage of the term in other claims of the patent, and differences among claims are useful guides in ascertaining the meaning of a particular claim term. Id. at 1314-15. For example, under the doctrine of claim differentiation, when a patent contains dependent claims that add a particular limitation, the court must initially apply a presumption that the limitation in question is not present in the independent claim. See id. The absence of a limitation in the independent claim is “strong evidence” that the independent claim is not bound by the limitations listed in the narrower, dependent claims. See Saunders Grp., Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1331 (Fed. Cir. 2007); Honeywell Int'l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 994 (Fed. Cir. 2007).
However, claims must be read in light of the specification. Phillips, 415 F.3d at 1315. “[T]he specification is always highly relevant ... [and] is the single best guide to the meaning of a disputed term.” Id. (quotation omitted). The specification “may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess, ” or the specification “may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor.” Id. at 1316. Where a patentee chooses to act as its own lexicographer, the patentee “must clearly express that intent in the written description.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (citing Phillips, 415 F.3d at 1316; Bell Atl. Network Servs. v. Covad Commc'ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001)). Likewise, an inventor's disavowal of scope should be “clear and unmistakable.” See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1120 (Fed. Cir. 2004).
The prosecution history is “created by the patentee in attempting to explain and obtain the patent, ” and provides “evidence of how the [Patent and Trademark Office] and the inventor understood the patent.” Phillips, 415 F.3d at 1317. However, the prosecution history is “less useful” because “it often lacks the clarity of the specification.” Id.
Finally, courts may consider extrinsic evidence, which includes expert and inventor testimony, dictionaries, and treatises. Id. Extrinsic evidence is generally “less reliable than the patent and its prosecution history” (id. at 1318-19), and must be “considered in the context of the intrinsic evidence” (id. at 1319). With this framework in mind, the court turns to the disputed claim terms and phrases.
III. ANALYSIS
The following ten (10) terms and phrases, disputed by the parties, are discussed below:
1. “a vane”
2. “rotate relative to the opening”
3. “translate relative to the opening”
4. “generally oblong cross-sectional shape”
5. “a side profile of the blocking segment is shaped to mate with a side profile of the opening, when the blocking segment is in the closed position”
6. “blocking segment configured to rotate relative to the opening between a closed position where the flow of air through the opening is restricted, and an open position where the flow of air through the opening is less restricted”
7. “blocking segment configured to translate relative to the opening [along the shorter first dimension] between a closed position where the flow of air through the opening is restricted, and an open position where the flow of air through the opening is less restricted”
8. “closed position”
9. “restricted”
10. “blocking surface”
Prior to discussing each of these disputed terms and phrases, the court will first address Defendant's arguments regarding the invalidity of the '588 Patent pursuant to 35 U.S.C. § 112.
A. Invalidity Pursuant to 35 U.S.C. § 112
In its claim construction briefs, Defendant presents several invalidity arguments pursuant to 35 U.S.C. § 112, for lack of a written description, lack of enablement, and indefiniteness. Although not entirely clear, it appears that Defendant argues the patent claims as a whole are invalid, and more specifically that Terms 1, 4, 5, and 10 lack written description; Term 1 lacks enablement; and Terms 1, 3-6, and 10 are indefinite. Defendant also appears to assert two theories of invalidity. First, Defendant appears to argue that some of the '588 Patent claims are invalid as currently written, notwithstanding the court's claim construction. See, e.g., Def.'s Mem. [DE-123] at 21 (“In other words, the parties appear to agree on the meaning of “translate” (except that [Defendant] contends that ‘translate' is indefinite under 35 U.S.C. 112, second paragraph, insofar as it appears nowhere in the '588 Patent specification).”). And second, Defendant appears to argue that if the court were to adopt Plaintiff's proposed meaning for certain terms, it would then render the '588 Patent claims invalid. See e.g., id. at 13, 15 (“Accordingly, if the scope of the asserted claims were broad enough to include a single-vane embodiment, the claims would be invalid under § 112. [Plaintiff's] proposed construction must be rejected....In other words, [Plaintiff's] construction would render the claims indefinite.”).
Section 112 of the Patent Act provides different requirements for patent validity, including that “[t]he specification shall contain a written description of the invention ....” 35 U.S.C. § 112(a). “That requirement is satisfied only if the inventor ‘convey[s] with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention,' and demonstrate[s] that by disclosure in the specification of the patent.” Nuvo Pharms. (Ireland) Designated Activity Co. v. Dr. Reddy's Labs., Inc., 923 F.3d 1368, 1376 (Fed. Cir. 2019) (alterations in original) (quoting Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011)). In other words, “[t]he written description must ‘clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.'” Western Plastics, Inc. v. DuBose Strapping, Inc., 334 F.Supp.3d 744, 760 (E.D. N.C. 2018) (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)). “Whether a patent complies with the written description requirement is a question of fact determined as of the time of filing.” Western, 334 F.Supp.3d at 760.
Section 112 further contains an enablement requirement. In relevant part, section 112 states that:
[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same ....35 U.S.C. § 112(a). The Federal Circuit has “recognized that the enablement requirement, which requires the specification to teach those skilled in the art how to make and use the claimed invention without undue experimentation, is separate and distinct from the written description requirement.” Nuvo, 923 F.3d at 1382 (citing Ariad, 598 F.3d at 1343-51). Whether a patent complies with the enablement requirement is again a question of fact and requires the court to consider factors such as:
the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples in the patent, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims.Western, 334 F.Supp.3d at 761 (citing Edwards Lifesciences. AG v. CoreValue, Inc., 699 F.3d 1305, 1310 (Fed. Cir. 2012)).
Under section 112 a patent may also be found invalid for indefiniteness. Section 112(b) requires that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” 35 U.S.C. § 112(b). “[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.” Krausz Indus. Ltd. v. Smith-Blair, Inc., 122 F.Supp.3d 381, 397 (E.D. N.C. 2015) (alteration in original) (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014)).
Notwithstanding these requirements, all patents are presumed to be valid. 35 U.S.C. § 282(a). “The burden of establishing invalidity of a patent or any claim thereof [] rest[s] on the party asserting such invalidity.” Id. Specifically, “[g]overning law ‘requires patent challengers to prove invalidity by clear and convincing evidence.'” Viva Healthcare Packaging (USA) Inc. v. CTL Packaging USA, Inc., No. 3:13-cv-00569-MOC-DSC, 2015 WL 1346091, at *6 (W.D. N.C. Mar. 24, 2015) (quoting Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1367 (Fed. Cir. 2002)); see also Nautilus, 572 U.S. at 912 n.10 (citing Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011); Teva Pharms. USA, Inc. v. Sandoz, Inc., 723 F.3d 1363, 1368 (Fed. Cir. 2013)).
Regarding validity at the claim construction stage in particular, the Federal Circuit has stated:
While we have acknowledged that claims should be construed to preserve their validity, we have not applied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular component of claim construction. Instead, we have limited the maxim to cases in which the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.Phillips, 415 F.3d at 1327. In subsequent cases, district courts have varied in the decision of whether to address invalidity arguments at the claim construction stage. Compare Viva, 2015 WL 1346091, at *6-7 (declining to rule on invalidity arguments in claim construction order), and Kluhsman Mach., Inc. v. Dino Paoli SRL, No. 5:19-CV-00020-KDB-DSC, 2020 WL 4227470, at *9-11 (W.D. N.C. July 23, 2020) (declining to rule on invalidity arguments in claim construction order), with Krausz, 122 F.Supp.3d at 397-99 (finding term not invalid due to indefiniteness in claim construction order).
In reviewing Defendant's invalidity contentions and the evidence of record here, the undersigned RECOMMENDS that the court not rule on the issue of invalidity at this time. “The [undersigned] finds that the record, as it currently stands, does not show clear and convincing evidence of invalidity.” Viva, 2015 WL 1346091, at *6. Further, “developments in the record as this case proceeds[, ]” along with the issuance of the instant claim construction order, “will assist the court in reaching a conclusion on [the invalidity] issues.” Id. Specifically, in light of a claim construction order and the terms defined therein, Defendant may be able to further clarify each of its invalidity allegations.
Where Defendant asserts that any of the individual contested terms or phrases discussed below are indefinite, as opposed to the '588 Patent claims as a whole, the undersigned finds such argument unpersuasive. As discussed further below, the undersigned finds that for each of the contested terms or phrases, either a meaning can be construed, or no construction is necessary because the term is readily understood by its plain language and context within the claim.
B. Contested Terms
1. Disputed Term - “A Vane”
• Plaintiff's proposed construction: “a blade or plate whose primary purpose is to convert kinetic energy in the form of fluid movement into rotational movement.”
• Defendant's proposed construction: “one of a plurality of blades or plates whose primary purpose is to convert kinetic energy in the form of fluid movement into rotational movement.”
• Court's recommended construction: “a blade or plate whose primary purpose is to convert kinetic energy in the form of fluid movement into rotational movement.”
The term “a vane” is found in Claims 1-6, 13-14, and 20-21 of the '588 Patent. In general, the claims identify a respiratory treatment device containing “a vane configured to rotate [a] blocking segment between the closed position and the open position in response to the flow of air through the opening.” '588 Patent, Col. 12, lines 22-24; see also '588 Patent, Col. 13, lines 8-11; Col. 14, lines 9-12. The claims further describe different ways in which the blocking segment can be affixed to the vane (see '588 Patent, Col. 12, lines 27-31; Col. 13, lines 12-23; Col. 14, lines 13-14), as well as ways in which the vane may be configured to move (see '588 Patent, Col. 12, lines 32-42).
As a threshold matter, the parties generally agree that the term “vane” means either a blade or plate “whose primary purpose is to convert kinetic energy in the form of fluid movement into rotational movement.” See Pl.'s Mem. [DE-120] at 13; Def.'s Mem. [DE-123] at 9. Thus, the only dispute pertains to whether the term “a vane” within the context of the '588 Patent should be construed to mean a plurality of vanes, or more broadly, to mean a single vane. Plaintiff argues that the term vane should be construed broadly, to include one or more vanes. Pl.'s Mem. [DE-120] at 14. Plaintiff argues that such construction is consistent with both the plain and ordinary language of the claim as well as the specification. Id at 14-16. Defendant argues that the term should be construed to mean multiple vanes. Def.'s Mem. [DE-123] at 10. Defendant argues that such construction is consistent with the patent specification as well as the prosecution history. Id. at 9-13.
The undersigned's analysis begins with the claims, as they “provide substantial guidance as to the meaning of particular claim terms.” Wyeth v. Sandoz, Inc., 570 F.Supp.2d 815, 820 (E.D. N.C. 2008) (quoting Phillips, 415 F.3d at 1314). The plain language of the claims supports a broader construction of the term “a vane, ” as argued by Plaintiff. The United States Court of Appeals for the Federal Circuit “has repeatedly emphasized that an indefinite article ‘a' or ‘an' in patent parlance carries the meaning of ‘one or more' in open-ended claims containing the transitional phrase ‘comprising.'” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (citing KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). Indeed, “[t]hat ‘a' or ‘an' can mean ‘one or more' is best described as a rule rather than merely as a presumption or even a convention.” Baldwin, 512 F.3d at 1342; see also Veolia Water Sols. & Techs. Support v. Siemens Indus., Inc., No. 5:11-CV-00296-FL, 2014 WL 8769776, at *27 (E.D. N.C. May 5, 2014); Wyeth v. Sandoz, Inc., 703 F.Supp.2d 508, 528-29 (E.D. N.C. 2010). The claims here explicitly identify respiratory treatment devices “comprising . . . a vane” (see, e.g., '588 Patent, Col. 12, lines 12, 22), supporting that the term means one or more vanes. Further, the claims do not contain any language either explicitly stating, or indicating, that multiple vanes are required.
However, the claims must be read in light of the specification. Phillips, 415 F.3d at 1315. Both parties acknowledge that the term “a vane” appears nowhere in the specification. Pl.'s Mem. [DE-120] at 16; Def.'s Mem. [DE-123] at 9-10. However, in discussing various embodiments of the '588 Patent, the specification does use the term “vanes.” In particular, the specification uses the terms “plurality of vanes” ('588 Patent, Col. 2, line 55; Col. 3, lines 18, 27, 46; Col. 9, lines 11, 53), “adjacent vanes” ('588 Patent, Col. 9, line 57; Col. 10, line 57), and “any number of vanes” ('588 Patent, Col. 10, line 55). Also included in the '588 Patent are various figures depicting different embodiments of the '588 Patent, each of which portrays a structure with multiple vanes. See '588 Patent, Figs. 1-18. No figure portrays a structure containing only a single vane.
In light of the figures depicting only multiple vane embodiments as well as the language of the specification, which does not include the term “vane” and generally refers to embodiments with multiple vanes, Defendant argues that a person having ordinary skill in the art would construe the claim term “a vane” to require multiple vanes. See Def.'s Mem. [DE-123] at 9-12. Yet, while the plain language of both “plurality of vanes” and “adjacent vanes” may indicate that the embodiments require more than a single vane, the language of “any number of vanes” makes clear that an embodiment can have only a single vane. This is also supported by the ordinary dictionary definition of the word “any, ” which is defined to mean “one or more indiscriminately from all those of a kind.” Any, Webster's Third New International Dictionary 97 (2002).
Further, accepting Defendant's argument as true would improperly read limitations from the specifications into the claim. “[A]lthough the specification often describes very specific embodiments of the invention, [the Federal Circuit has] repeatedly warned against confining the claims to those embodiments.” Dynatemp Int'l, Inc. v. R421A, LLC, --- F.Supp.3d ---, No. 5:20-CV-142-FL, 2021 WL 4256279, at *4 (E.D. N.C. Sept. 17, 2021) (alterations in original) (quoting Phillips, 415 F.3d at 1323). “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.” Dynatemp, 2021 WL 4256279, at *4 (quoting Phillips, 415 F.3d at 1323). Here, the specification makes clear that the patentee intended to set out specific examples of the respiratory treatment device, rather than the embodiments be strictly coextensive. For example, the specification states that “[a]lthough the description of the embodiments described above refer to the administration of OPEP therapy on exhalation, it should be appreciated that such embodiments are also configurable for the administration of oscillating pressure therapy upon exhalation only, inhalation only, or both exhalation and inhalation.” '588 Patent, Col. 11, lines 58-63 (emphasis added). The specification also states:
The foregoing description of the inventions has been presented for purposes of illustration and description, and is not intended to be exhaustive or to limit the inventions to the precise forms disclosed. It will be apparently to those skilled in the art that the present inventions are susceptible of many variations and modifications coming withing the scope of the following claims.'588 Patent, Col. 13, lines 3-9 (emphasis added).
Both statements support that the embodiments here are not intended to be strictly coextensive, but rather, “the patent is setting out specific examples of embodiments of the [respiratory treatment device] without limiting the meaning of [‘a vane'] to those embodiments.” Krausz, 122 F.Supp.3d at 389 (citing Phillips, 415 F.3d at 1323). Furthermore, “[p]articular embodiments appearing in the written description will not be used to limit claim language that has broader effect[, ] . . . unless the patentee has demonstrated a clear intention to limit the claim scope using words or expression of manifest exclusion or restriction.” Krausz, 122 F.Supp.3d at 389 (second and third alterations in original) (quoting Innova/Pure, 381 F.3d at 1117). “Here, there is no such expression of manifest exclusion or restriction serving to limit the claim scope based upon the description in the specification.” Krausz, 122 F.Supp.3d at 390.
Turning to the prosecution history, Defendant alleges that a statement of prior invention submitted during the prosecution of a grandparent patent evinces that the inventors of the '588 Patent did not intend to claim a single-vane embodiment. Def.'s Mem. [DE-123] at 12-13. Specifically, Defendant cites to “pages from an inventor's lab notebook” showing a sketch of what appears to be a single-vane respiratory treatment device. Id. at 12. Defendant argues that “there is no indication-whether in the file history or the '588 patent itself-that the inventors intended to patent such an embodiment.” Id. And, “[c]ombined with the illustration of a single-vane device in the inventor's notebook, the lack of disclosure of such an embodiment elsewhere in the intrinsic evidence indicates that the inventors did not intend to claim a single-vane embodiment as their invention[, ]” but instead “it implies that the inventors intended to abandon and/or disclaim such an embodiment ....” Id. at 13.
Yet, the court cannot “rely on the prosecution history to construe the meaning of the claim to be narrower than it would otherwise be unless a patentee limited or surrendered claim scope through a clear an unmistakable disavowal.” 3M Innovative Props. v. Tredegar Corp., 725 F.3d 1315, 1322 (Fed. Cir. 2013) (citing Trading Tech. Int'l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010); Vitronics, 90 F.3d at 1582-83). Here, there is no clear and unmistakable disavowal. At most, the inventor's decision to not claim a single-vane embodiment may imply that the inventor attempted to abandon or disclaim a single-vane embodiment, as argued by Defendant. See Def.'s Mem. [DE-123] at 13 (stating that this prosecution history “implies that the inventors intended to abandon and/or disclaim such an embodiment” (emphasis added)). Yet, it is not a “clear and unmistakable disavowal” allowing the court to construe the meaning of “a vane” to be narrower than it would otherwise be.
Finally, both parties reference extrinsic evidence in support of their relative positions. For example, Defendant cites to an isolated statement by inventor Dan Engelbreth. Defendant states that Mr. Engelbreth “confirmed that if vanes 1 through 6 of annotated Figure 14 . . . were removed-and only a single vane remained-‘[the] device would not operate using just human breath.'” Def.'s Resp. [DE-133] at 14 (second alteration in original). The undersigned has reviewed the extrinsic evidence by each party but assigns it little weight. TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1375 (Fed. Cir. 2008) (citing Phillips, 415 F.3d at 1324) (“Lastly, the prototype, as extrinsic evidence, need be given little weight in the court's claim construction if it is outweighed by clear intrinsic evidence.”); see also Deerpoint Grp., Inc. v. Agrigenix, LLC, No. 1:18-CV-0536 AWI BAM, 2022 WL 36963, at *3 (E.D. Cal. Jan. 3, 2022) (quoting Intel Corp. v. VIA Techs., 319 F.3d 1357, 1367 (Fed. Cir. 2003)) (“When an analysis of intrinsic evidence resolves any ambiguity in a disputed claim term, it is improper to rely on extrinsic evidence to contradict the meaning so ascertained.”); Dynatemp, 2021 WL 4256279, at *7 (“Indeed, [because] ‘there is a virtually unbounded universe of potential extrinsic evidence of some marginal relevance . . . each party will naturally choose the pieces of extrinsic evidence most favorable to its cause, leaving the court with the considerable task of filtering the useful extrinsic evidence from the fluff.”).
In sum, the parties generally agree that the term “vane” means either a blade or plate “whose primary purpose is to convert kinetic energy in the form of fluid movement into rotational movement.” Yet, the parties disagree as to whether the term “a vane” should be construed broadly to mean one or more vanes, or narrowly, to mean two or more vanes. Based on the intrinsic evidence - namely, the claim language, specification and prosecution history - the undersigned finds that a person having ordinary skill in the art would interpret the term broadly.
Accordingly, the undersigned RECOMMENDS the term “a vane, ” be construed to mean “a blade or plate whose primary purpose is to convert kinetic energy in the form of fluid movement into rotational movement.”
2. Disputed Term - “Rotate Relative to the Opening”
• Plaintiff's proposed construction: “move a body relative to the opening about a point at a fixed radius.”
• Defendant's proposed construction: “complete a full revolution about an axis of rotation having an open position permitting the passage of air and a closed position completely blocking the passage of air.”
• Court's recommended construction: “move a body relative to the opening about a point at a fixed radius.”
The term “rotate relative to the opening” is found in Claim 1 of the '588 Patent. '588 Patent, Col. 12, lines 17-18. Claim 1 identifies a respiratory treatment device containing “a blocking segment configured to rotate relative to the opening between a closed position where the flow of air through the opening is restricted, and an open position where the flow of air through the opening is less restricted ....” '588 Patent, Col. 12, lines 17-21 (emphasis added).
Plaintiff argues that the term means “move a body relative to the opening about a point at a fixed radius.” Pl.'s Mem. [DE-120] at 17. Plaintiff argues that such construction “is consistent with the ordinary meaning of ‘rotate,' and is supported by the specification, claim language, and extrinsic record.” Id. Defendant argues that the term means “complete a full revolution about an axis of rotation having an open position permitting the passage of air and a closed position completely blocking the passage of air.” Def.'s Mem. [DE-123] at 16. Specifically, Defendant contends that “rotate relative to the opening” means that there must be a “complete rotation, ” and when rotated to the closed position the flow of air is completely blocked. See id. Essentially, Defendant argues that Plaintiff's proposed construction is overbroad, and the specification supports a more limited construction. The plain language of the term, the context in which it appears, and the prosecution history, however, support Plaintiff's broader proposed construction.
The language of Claim 1 supports a broader construction of the term “rotate relative to the opening.” Contrary to Defendant's proposed construction, nothing in the claim language indicates that the term means either a full revolution or that the passage of air is completely blocked. While Dependent Claim 7 does include an added limitation that the flow of air is completely blocked when the device is in the closed position, such language does not appear in Independent Claim 1. See '588 Patent, Col. 12, lines 43-45. Under the doctrine of claim differentiation there is a “presumption that the independent claim is broader than the dependent claims.” Wyeth, 570 F.Supp.2d at 823 (citing Phillips, 415, F.3d at 1314-15). Thus, the absence of a limitation that the air is completely blocked in Claim 1 is “‘strong evidence' that the independent claim is not bound by the limitations in the narrower, dependent claim[].” Wyeth, 570 F.Supp.2d at 820 (citing Saunders, 492 F.3d at 1331; Honeywell, 488 F.3d at 994).
The specification here also discusses several embodiments of the '588 Patent, each providing varying degrees of “rotation.” For example, in one embodiment it is noted that even though “the restrictor member 142 is preferably only rotated in a single direction[, ]” a “motor may be configured to rotate the restrictor member back and forth in opposite directions ....” '588 Patent, Col. 7, lines 16-19. In another embodiment, it is merely noted that an attached turbine “causes the restrictor member 442 to rotate” and the “blocking segments 446 [to] pass by a chamber inlet 436[, ]” without defining the degree of rotation. '588 Patent, Col. 9, lines 36-40. In yet another embodiment, it is noted that “the restrictor member rotates, and [] the blocking segment 546 periodically passes by the chamber inlet 536[, ]” this time evincing that rotation may indeed be continuous. '588 Patent, Col.9, lines 60-62.
While Defendant does acknowledge that “[t]he '588 patent discloses multiple types of embodiments[, ]” Defendant argues that the claims only cover the breath-powered embodiments discussed in the specification. Def.'s Mem. [DE-123] at 16. And, “[t]he specification's description of the breath-powered embodiments makes clear that, for those embodiments, exhaled air causes the restrictor member to rotate continuously on its axis, completing a full revolution so that the blocking segment(s) periodically pass by the opening and completely block the flow path.” Id. at 17. Even accepting this argument as true, the specification here should not be read as limiting the claim language to mean only a full rotation. As discussed above, it is clear that in the specification “the patent is setting out specific examples of embodiments of the [respiratory treatment device] without limiting the meaning of [‘rotate relative to the opening'] to those embodiments.” Krausz, 122 F.Supp.3d at 389 (citing Phillips, 415 F.3d at 1323). Furthermore, “there is no [] expression of manifest exclusion or restriction [by the patentee] serving to limit the claim scope based upon the description in the specification” here. Krausz, 122 F.Supp.3d at 390. For example, the specification here provides inconsistent and varying degrees of rotation when describing the different embodiments. See Wyeth, 570 F.Supp.2d at 826 (finding no clear intent to limit claim language, and specifically noting that the patentee “did not set forth a precise consistent definition” of the contested term).
To be clear, the undersigned only accepts Defendant's contentions here for the sake of argument. While Defendant contends that it is “clear” that breath-powered embodiments use exhaled air to continuously rotate a blocking segment, the specification does not appear to fully support such this contention. For example, the specification provides that “[a]lthough the description of the embodiments described above refer to the administration of OPEP therapy on exhalation, it should be appreciated that such embodiments are also configurable for the administration of oscillating pressure therapy upon exhalation only, inhalation only, or both exhalation and inhalation.” '588 Patent, Col. 11, lines 58-63 (emphasis added). This statement indicates that a device may exist in which air is exhaled or inhaled, causing the blocking segment to move in different directions rather than continuously rotate.
The undersigned also finds that the prosecution history supports a broader construction of the term. Defendant alleges two portions of the prosecution history are relevant. First, Defendant cites to a statement of prior invention submitted in a grandparent application, that was omitted from the grandparent patent's written description. See Def.'s Mem. [DE-123] at 17. Second, Defendant cites to amendments to the grandparent and parent patents, in which “the inventors amended their claims to specify that the claimed restrictor member was ‘rotatable through a complete revolution.'” Id. at 18 (quoting Ex. B [DE-123-9]). Defendant argues that based on this history, the term at issue here should be limited to mean a full revolution.
As discussed above, the court cannot “rely on the prosecution history to construe the meaning of the claim to be narrower than it would otherwise be unless a patentee limited or surrendered claim scope through a clear and unmistakable disavowal.” 3M Innovative, 725 F.3d at 1322. Here, the undersigned finds no such clear and unmistakable disavowal. “Indeed, the fact that the more specific descriptive terms appear in a different patent application, but not in the application for the patent in suit, tends to show that the inventor did not intend to so limit the ['588] patent claims.” Krausz, 122 F.Supp.3d at 390.
In sum, Defendant's proposed construction includes additional limitations not supported by the intrinsic evidence. On the other hand, Plaintiff's proposed construction is supported by the claim language, specification, and prosecution history. Plaintiff's proposed construction is also consistent with the plan language of the terms “rotate” and “relative to.” “Rotate” is defined to mean “to turn about an axis or a center.” Rotate, Webster's Third New International Dictionary 1976 (2002). While “relative to” is defined to mean “with regard to” or “in connection with.” Relative to, Merriam-Webster, https://www.merriam-webster.com/dictionary/relative%20to (last accessed Mar. 15, 2022). Both terms support Plaintiff's proposed construction of “move a body relative to the opening about a point at a fixed radius.” Further, neither term, nor the intrinsic evidence, support additional limitations for a full revolution or the passage of air being completely blocked.
Accordingly, the undersigned RECOMMENDS the term “rotate relative to the opening, ” be construed to mean “move a fixed body relative to the opening about a point at a fixed radius.”
3. Disputed Term - “Translate Relative to the Opening”
• Plaintiff's proposed construction: “move a body along an opening in a manner in which all parts of the body move the same distance in the same amount of time as viewed through the opening.”
• Defendant's proposed construction: “movement of bodies in a manner in which all parts of the body move the same distance in the same amount of time relative to the opening.”
• Court's recommended construction: “move a body relative to the opening in a manner in which all parts of the body move at the same distance in the same
amount of time.”
The term “translate relative to the opening” is found in Claims 9, 18 and 24 of the '588 Patent. '588 Patent, Col. 12, lines 57-58; Col. 13, lines 30-31; Col. 14, lines 25-26. Each claim identifies a version of a respiratory treatment device containing a “blocking segment” that is “configured to translate relative to the opening” between an open and closed position. '588 Patent, Col. 12, lines 57-61; Col. 13, lines 30-34; Col. 14, lines 24-27 (emphasis added). The term “translate” does not appear in the specification or the remainder of the '588 Patent.
Both parties generally agree that the individual term “translate” means the movement of a body or bodies the same distance in the same amount of time. See Pl.'s Mem. [DE-120] at 21; Def.'s Mem. [DE-123] at 22. However, the parties disagree about what the term “translate relative to the opening” means in context of the '588 Patent. Plaintiff argues that the term means to “move a body along the opening in a manner in which all parts of the body move the same distance in the same amount of time as viewed through the opening.” Pl.'s Mem. [DE-120] at 20 (emphasis added). Plaintiff argues that such construction “clarifies and makes explicit” what “relative to the opening means.” Id. at 21-22. Defendant argues that the term means “movement of bodies in a manner in which all parts of the body move the same distance in the same amount of time relative to the opening.” Def.'s Mem. [DE-123] at 20 (emphasis added). Defendant contends that nothing in the intrinsic record supports construing the term to include “along the opening.” Id. at 23. Defendant also contends that the portion of the term “relative to the opening” should be construed in the same manner it was in the above term, “rotate relative to the opening.” Def.'s Resp. [DE-133] at 19-20. The plain language of the term and the context in which it appears generally support Defendant's proposed construction.
The language of the claims supports that the term should mean “relative to the opening” rather than “along an opening.” To begin, nothing in the claim language itself uses or references the phrase “along an opening, ” nor does the claim describe any form of movement as being specifically along the opening. On the other hand, the phrase “relative to the opening” is used in two different contexts in the '588 Patent claims. Along with being used in connection with the disputed term here “translate relative to the opening, ” it is also used in the disputed term immediately preceding this term, “rotate relative to the opening.” '588 Patent, Col. 12, lines 1718. Notably, the parties do not dispute what the phrase “relative to the opening” means in the context of the above term rotate relative to the opening, both directly incorporating the phrase into their proposed constructions. As noted by Defendant, “[a] word or phrase used consistently throughout a claim should be interpreted consistently.” Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1031 (Fed. Cir. 2002) (alteration in original) (quoting Phonometrics, Inc. v. N. Telecom Inc., 133 F.3d 1459, 1465 (Fed. Cir. 1998)); see also Wyeth, 570 F.Supp.2d at 823 (“[A] patentee normally uses claim terms consistently throughout a patent, such that the usage of a term in one claim can illuminate the meaning of the same term in other claims”). Here, the consistent usage of the term “relative to the opening” by the patentee, evinces that the term is intended to have a similar meaning in both contexts. As discussed above, the term “relative to” is a well-known and non-technical term, simply defined to mean “with regard to” or “in connection with.” Relative to, Merriam-Webster, https://www.merriam-webster.com/dictionary/relative%20to (last accessed Mar. 15, 2022). Thus, it is unclear why further explanation of the phrase “relative to the opening” would be needed in this context, but not needed above.
The specification also supports that that the term should mean “relative to the opening” rather than “along an opening.” Plaintiff argues that the specification describes and depicts several embodiments in which “a blocking segment translates relative to an opening.” Pl.'s Mem. [DE-120] at 22 (citing '588 Patent, Fig. 13). While these figures may well depict a blocking segment translating relative to the opening, Plaintiff does not explain why the phrase “relative to the opening” should be substituted with “along an opening.” In other words, Plaintiff does not sufficiently explain why the phrase “relative to the opening” is unclear or needs further description in the term “translate relative to the opening.”
As noted above, the terms “translate” and “relative to” do not appear in the specification of the '588 Patent.
Indeed, Plaintiff's only proffered justification appears to be that, absent further explanation:
any body exhibiting movement in the form of translation, including those not moving along the opening, or simply translating distant from the opening, could be considered as translating relative to the opening, even though such bodies would not restrict the flow of air through the opening as claimed, thus rendering the “relative to the opening” language meaningless.Pl.'s Mem. [DE-120] at 22 (emphasis in original). However, read in light of the claim language and specification, it is clear that the blocking segments would be translating closely to the opening to restrict the flow of air. For example, Plaintiff relies upon Figure 13 to show a blocking segment translating relative to the opening. This figure also shows that the blocking segment would be translating in close proximity to the opening. Indeed, in looking at this figure, along with the descriptions provided in the specification and claim itself, a person having ordinary skill in the art would understand that the blocking segment translating would be in close proximity to the opening, in order to restrict the flow of air.
Finally, both parties reference extrinsic evidence in support of their relative positions. For example, in support of their respective positions, both parties cite to the testimony of expert Dr. Durgin regarding the term “relative to the opening.” See, e.g., Pl.'s Mem. [DE-120] at 21; Def.'s Mem. [DE-123] at 21-23. The undersigned has reviewed such evidence and again assigns it little weight, in light of the intrinsic evidence discussed above. See TIP Sys., 529 F.3d at 1375; Deerpoint, 2022 WL 36963, at *3; Dynatemp, 2021 WL 4256279, at *4.
In sum, the parties do not contest the meaning of “translate, ” only disputing whether the phrase “relative to the opening” needs further explanation. Because the term “relative to the opening” is readily discernable in light of its plain language, the claims and the specification, the undersigned finds that no further explanation of the term is needed. The undersigned further finds that Plaintiff's proposed definition of “along an opening” is unsupported by the intrinsic evidence of record.
Accordingly, the undersigned RECOMMENDS the term “translate relative to the opening, ” be construed to mean “move a body relative to the opening in a manner in which all parts of the body move at the same distance in the same amount of time.”
4. Disputed Term - “Generally Oblong Cross-Sectional Shape”
• Plaintiff's proposed construction: “cross section having a generally rectangular or elliptical shape, wherein its larger dimension is much longer than its shorter dimension.”
• Defendant's proposed construction: “elongated square or circular form [crosssectional].”
• Court's recommended construction: “cross section having a generally rectangular or elliptical shape, wherein its larger dimension is longer than its shorter dimension.”
The term “generally oblong cross-sectional shape” is found in Claims 9 and 23 of the '588 Patent. '588 Patent, Col. 12, line 54; Col. 14, line 21. Claim 9 identifies a respiratory treatment device with “an opening positioned in an exhalation flow path defined between the inlet and the outlet, the opening having a generally oblong cross-sectional shape comprising a shorter first dimension and an elongated second dimension perpendicular to the first dimension ....” '588 Patent, Col. 12, lines 52-56 (emphasis added). Similarly, Claim 23 identifies a respiratory treatment device “wherein the opening has a generally oblong cross-sectional shape comprising a shorter first dimension and an elongated second dimension perpendicular to the first dimension.” '588 Patent, Col. 14, lines 21-23 (emphasis added).
Plaintiff argues that the term means “cross section having a generally rectangular or elliptical shape, wherein its large dimension is much loner than its shorter dimension.” Pl.'s Mem. [DE-120] at 24. Plaintiff argues that such construction is supported by the specification, claim language and extrinsic record. Id. Defendant argues that the term means “elongated square or circular form [cross-sectional].” Def.'s Mem. [DE-123] at 24. Defendant argues that the term “oblong” appears nowhere in the specification, however, its construction is consistent with dictionary definitions and expert testimony. Id. at 24-25. Defendant further argues that the intrinsic and extrinsic evidence do not support inclusion of the term “much.” Id. at 25. The plain language of the term and the context in which it appears support that the term should be constructed to mean “cross section having a generally rectangular or elliptical shape, wherein its larger dimension is longer than its shorter dimension.”
The plain language of the claims supports the undersigned's construction of the term. First, the claim language supports that the cross-sectional shape of the opening is “generally, ” as opposed to always, oblong. '588 Patent, Col. 12, line 54; Col. 14, line 21. Next, the claim language supports that the opening has a rectangular or elliptical shape. The claims state that the shape of the opening is “oblong, ” which is defined to mean “elongated, somewhat long” or “deviating from a square or circular form through elongation.” Oblong, Webster's Third New International Dictionary 1557 (2002). While Defendant argues that this shape is best defined as an “elongated square or circular form” (see Def.'s Mem. [DE-123] at 24-25), the terms rectangular and elliptical are more applicable. A “square” is defined as “a rectangle with all four sides equal” (Square, Webster's Third New International Dictionary 2214 (2002)), while a “circle” is defined as “a closed plane curve every point of which is equidistant from a fixed point within the curve” (Circle, Webster's Third New International Dictionary 408 (2002)). Thus, both square and circle indicate that the shape has some form of symmetry which is not found in an oblong shape. On the other hand, a “rectangle” is defined as “a parallelogram all of whose angles are right angles, ” especially “one with adjacent sides of unequal length” (Rectangle, Webster's Third New International Dictionary 1899 (2002)), while an “ellipse” is defined as “an elongated circle, a regular oval” (Ellipse, Webster's Third New International Dictionary 737 (2002)). By definition, these terms are deviations of a square and circle by elongation in one dimension. Indeed, other definitions of the term oblong explicitly refer to a shape that is “rectangular.” See Oblong, Webster's Third New International Dictionary 1557 (2002). Finally, the claim language does not support that the larger dimension is much longer than the shorter dimension. Instead, the claims merely state that the shape has “a shorter first dimension and an elongated second dimension ....” '588 Patent, Col. 12, lines 54-56; Col. 14, lines 22-23. Contrary to Plaintiff's assertion, the term “elongate, ” defined to mean “to increase the length of” or “stretch out” (Elongate, Webster's Third New International Dictionary 737 (2002)), does not indicate that the longer dimension is much longer.
The specification also supports the undersigned's recommended construction of the term. For example, the specification states that “the chamber inlet 136 is generally shown as being a single, rectangular inlet. However, the chamber inlet 136 could also be any shape or series of shapes ....” '588 Patent, Col. 5, lines 15-17. This supports that the shape of the opening is generally rectangular shaped, but make take the form of other shapes as well. Further, the specification does not support that the longer dimension of the opening is much longer than the shorter dimension. Figure 12, cited by Plaintiff, evinces that there is a longer and a shorter dimension to the opening in that particular embodiment. However, the term “much” is found nowhere in the specification, nor does the figure cited by Plaintiff indicate that one dimension must always be much longer than the other in every instance.
Accordingly, the undersigned RECOMMENDS the term “generally oblong cross-sectional shape, ” be construed to mean a “cross section having a generally rectangular or elliptical shape, wherein its larger dimension is longer than its shorter dimension.”
5. Disputed Term - “A Side Profile of the Blocking Segment is Shaped to Mate with a Side Profile of the Opening, When the Blocking Segment is in the Closed Position”
• Plaintiff's proposed construction: “an outline of the blocking segment, as viewed from the side of the blocking segment, is shaped to match with an outline of the opening, when the blocking segment is in the closed position.”
• Defendant's proposed construction: “contact the opening and completely block the flow of air.”
• Court's recommended construction: “an outline of the blocking segment, as viewed from the side of the blocking segment, is shaped to match with an outline of the opening, when the blocking segment is in the closed position.”
The term “a side profile of the blocking segment is shaped to mate with a side profile of the opening, when the blocking segment is in the closed position” is found in Claim 18 of the '588 Patent. '588 Patent, Col. 14, lines 1-3. The term does not appear in the specification or the remainder of the '588 Patent.
Plaintiff argues that the term means “an outline of the blocking segment, as viewed from the side of the blocking segment, is shaped to match with an outline of the opening, when the blocking segment is in the closed position.” Pl.'s Mem. [DE-120] at 26. Plaintiff argues that this construction is supported by the specification and the figures of the '558 patent. Id. Specifically, Plaintiff argues these show “that, as viewed from the side of the blocking segment (546), an outline of the blocking segment is curved to match with an outline of the opening.” Id. Defendant does not proffer a meaning for the entire term, instead focusing on the individual term “mate.” Def.'s Mem. [DE-123] at 26. Defendant argues that the term mate means “contact the opening and completely block the flow of air.” Id. at 25-26. The plain language of the claims and the specification support Plaintiff's proposed construction.
Contrary to Defendant's assertion, nothing in the language of the claim indicates that the term “mate” should be construed to mean that the blocking segment must “contact the opening and completely block the flow of air.” Indeed, Claim 18 explicitly states that the flow of air is merely “restricted” in the closed position. See '588 Patent, Col. 13, lines 30-34. Further contradicting Defendant's construction is the language of Dependent Claim 25. Unlike Independent Claim 18, Dependent Claim 25 does include a limitation that “the flow of air through the opening is completely blocked when the blocking segment is in the closed position.” '588 Patent, Col. 14, lines 28-30 (emphasis added). And, “[t]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Phillips, 415 F.3d at 1312. Indeed, “[t]he absence of a limitation in the independent claim is ‘strong evidence' that the independent claim is not bound by the limitations listed in the narrower, dependent claims.” Wyeth, 570 F.Supp.2d at 820 (citing Saunders, 492 F.3d at 1331; Honeywell, 488 F.3d at 994). Thus, Defendant's proposed construction incorporates limitations not found in the language of Claim 18.
The figures and specification also support Plaintiff's construction. As noted by Plaintiff, “various figures of the '588 Patent show that, as viewed from the side of the blocking segment (546), an outline of the blocking segment is curved to match with an outline of the opening.” Pl.'s Mem. [DE-120] at 26. For example, Figures 12-15 and 17 all show the cross-sectional view of a respiratory treatment device, in which an outline of the blocking segment and opening are visible. In each of the figures, the shape of the blocking segment is shown as matching the shape of the outline of the opening. Specifically, Figure 17 shows a side view of the blocking segment in the closed position, in which the shape of the blocking segment contours to the curve of the opening. While Defendant is correct that the opening itself is a “void space, ” the outline of the opening is nonetheless discernable in light of the remaining surrounding structure.
Finally, dictionary definitions of the individual terms support Plaintiff's proposed construction. The relevant portion of Claim 18 indicates that there is a blocking segment with a “side profile” that is shaped to “mate” with the side profile of the opening. '588 Patent, Col. 14, lines 1-3. The term “profile” is defined as “a representation of something in outline, ” especially “a human head or face represented or seen in a side view.” Profile, Webster's Third New International Dictionary 1811 (2002) (emphasis added). And when used as a verb, the term “mate” can be defined to mean “to put in close association” or “join closely together, ” or even specifically “to fit (mechanical parts) together.” Mate, Webster's Third New International Dictionary 1392 (2002). Both definitions are directly in line with Plaintiff's proposed construction.
Accordingly, the undersigned RECOMMENDS the term “a side profile of the blocking segment is shaped to mate with a side profile of the opening, when the blocking segment is in the closed position, ” be construed to mean “an outline of the blocking segment, as viewed from the side of the blocking segment, is shaped to match with an outline of the opening, when the blocking segment is in the closed position.”
6. Disputed Term - “Blocking Segment Configured to Rotate Relative to the Opening Between a Closed Position Where the Flow of Air Through the Opening is Restricted, and an Open Position Where the Flow of Air Through the Opening is Less Restricted”
• Plaintiff's proposed construction: Partially included in TMI Term 2, otherwise plain and ordinary meaning.
• Defendant's proposed construction: Pursuant to 35 U.S.C. § 112, ¶ 6 the function is: “to rotate relative to the opening between a closed position where the flow of air through the opening is restricted, and an open position where the flow of air through the opening is less restricted.” The structure is: “a restrictor member, i.e., 142 (Fig. 4), 342 (Fig. 8), 442 (Fig. 9), and 542 (Fig. 15), that rotates through a complete revolution and completely blocks the passage of air though [sic] the opening when in the closed position.”
• Court's recommended construction: No construction required.
The term “blocking segment configured to rotate relative to the opening between a closed position where the flow of air through the opening is restricted, and an open position where the flow of air through the opening is less restricted” is found in Claim 1 of the '588 Patent. '588 Patent, Col. 12, lines 17-21 (emphasis added).
Plaintiff argues that the term is partially included in Term 2, “rotate relative to the opening.” Pl.'s Mem. [DE-120] at 28. To the extent that it is not, Plaintiff argues that the term should be construed as its plain and ordinary meaning. Id. Defendant argues that the term embodies a means-plus-function claim limitation that should be constructed pursuant to 35 U.S.C. § 112, paragraph 6. Def.'s Mem. [DE-123] at 27. Because the term is readily understood by its plain language and context within the claim, no further construction is needed.
At the outset, the undersigned finds that the term is not governed by 35 U.S.C. § 112, paragraph 6. Where, as here, the claims do not use the term “means, ” there is a presumption that the claims are not means-plus-function claims. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347-49 (Fed. Cir. 2015). To overcome this presumption, a challenger can “demonstrate[] that the claim term fails to ‘recite[] sufficiently definite structure' or else recites ‘function without reciting sufficient structure for performing that function.'” Id. at 1348 (second alteration in original) (quoting Watts v. SL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Defendant here fails to do so.
In relevant part, section 112 of the Patent Act states:
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.35 U.S.C. § 112(f). “A claim element expressed in this fashion - that is, purely in terms of a function, without any structure for carrying out that function - is commonly referred to as a “means-plus-function” claim limitation. Such claim elements are limited to the materials or structure described in the specification.” Wyeth, 570 F.Supp.2d at 821 n.4 (citing Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir. 2006)).
The term “blocking segment” refers to the structural segment of the respiratory treatment device that actually restricts the flow of air through the opening. Claim 1 states that this is the portion of the respiratory device that operates by rotating relative to the opening. '588 Patent, Col. 12, lines 17-21. Claim 1 further specifies that it is used in connection with a vane, and the vane is the structure that rotates the blocking segment. '588 Patent, Col. 12, lines 22-24. Finally, Claim 1 explains that there is a “blocking surface of the blocking segment [which] is equal to or greater than [the] size of the opening.” '588 Patent, Col. 12, lines 25-26. Based on the language in the claims, it is apparent that the term blocking segment refers to the structure that is connected to a vane or vanes, that has a surface larger than the opening of the respiratory treatment device, and that rotates between an open and closed position. Additionally, the term “rotate relative to the opening” was previously recommended by the undersigned to be construed to mean “move a body relative to the opening about a point at a fixed radius, ” further indicating that there is a body, or structure, to the blocking segment here. While the contested term may be partially defined in terms of the function it performs (i.e., it restricts the flow of air), “that characteristic alone does not transform the term into a means-plus-function claim limitation.” Wyeth, 570 F.Supp.2d at 822 (citing Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1361 (Fed. Cir. 2004)). Further, merely because the term may not denote a specific structure, but instead “covers a broad class of structures[, ]” it again does not transform the term into a means-plus-function claim limitation. Lighting, 382 F.3d at 1359-60.
Having determined that 35 U.S.C. § 112, paragraph 6 does not govern the term, the undersigned must look at whether construction of the term “blocking segment configured to rotate relative to the opening between a closed portion where the flow of air through the opening is restricted, and an open position where the flow of air through the opening is less restricted” is needed. In so doing, the undersigned finds that meaning of the term is readily apparent in light of its plain language, its context within the claims, and the undersigned's previous recommended construction of the term “rotate relative to the opening.”
To note, Defendant offers no proposed construction in either its opening claim construction brief or its responsive claim construction brief, outside of its argument that the term embodies a means-plus-function limitation. Further, Defendant states that “[t]he parties agree that the ‘blocking segment' functions to restrict, or block, the flow of air when in a ‘closed position' and to allow the flow of air when in an ‘open position.'” Def.'s Resp. [DE-133] at 25.
The term “blocking segment” is readily understood by its plain language. Specifically, the word “segment” is defined as “a piece or separate fragment of something.” Segment, Webster's Third New International Dictionary 2056 (2002). The word “blocking” is defined as “the act of one that blocks.” Blocking, Webster's Third New International Dictionary 236 (2002). And, when used as a verb, “block” is defined to mean “to render unsuitable for passage or progress by obstruction.” Block, Webster's Third New International Dictionary 235 (2002). Further, as discussed above, the term rotate relative to the opening has been construed to mean “move a body relative to the opening about a point at a fixed radius.” In light of this prior recommended construction, the plain language of the term, and the remainder of the claim, the term here is readily understood to mean the part of the respiratory treatment device that moves relative to the opening about a fixed radius and obstructs or restricts the flow of air. Specifically, when the blocking segment is in the closed position the flow of air through the opening is more restricted, and when the blocking segment is in the open position the flow of air through the opening is less restricted.
Accordingly, the undersigned RECOMMENDS no construction of the term “blocking segment configured to rotate relative to the opening between a closed position where the flow of air through the opening is restricted, and an open position where the flow of air through the opening is less restricted” is required.
7. Disputed Term - “ Blocking Segment Configured to Translate Relative to the Opening [Along the Shorter-First Dimension] Between a Closed Position Where the Flow of Air Through the Opening is Restricted, and an Open Position Where the Flow of Air Through the Opening is Less Restricted”
• Plaintiff's proposed construction: Partially included in TMI Term 3, otherwise plain and ordinary meaning.
• Defendant's proposed construction: Pursuant to 35 U.S.C. § 112, ¶ 6 the function is: “to translate relative to the opening [along the shorter first dimension] between a closed position where the flow of air through the opening is restricted, and an open position where the flow of air through the opening is less restricted.” The structure is: “a restrictor member, i.e., 142 (Fig. 4), 342 (Fig. 8), 442 (Fig. 9), and 542 (Fig. 15), that rotates through a complete revolution and completely blocks the passage of air though [sic] the opening when in the closed position.”
• Court's recommended construction: No construction required.
The term “blocking segment configured to translate relative to the opening [along the shorter-first dimension] between a closed position where the flow of air through the opening is restricted, and an open position where the flow of air through the opening is less restricted” is found in Claims 9 and 18 of the '588 Patent. '588 Patent, Col. 12, lines 57-61; Col. 13, lines 3034 (emphasis added).
The bracketed portion appears only in Claim 9.
Similar to Term 6 above, Plaintiff argues that the term is partially included in Term 3, “translate relative to the opening/translate.” Pl.'s Mem. [DE-120] at 31. And again, to the extent that it is not, Plaintiff argues that the term should be construed as its plain and ordinary meaning. Id. Defendant again argues that the term embodies a means-plus-function claim limitation that should be constructed pursuant to 35 U.S.C. § 112, paragraph 6. Def.'s Mem. [DE-123] at 27. Because the term is readily understood by its plain language and context within the claim, no further construction is needed.
For the same reasons provided when discussing Term 6 above, the undersigned finds that 35 U.S.C. § 112, paragraph 6 does not govern the term here. While Defendant tries to differentiate this term from Term 6 above due to the lack of vane configured to rotate the blocking segment, the undersigned nonetheless finds that the term sufficiently recites a structure even without being configured to a vane. Finally, in light of the plain language of the term, its context within the claims, and the undersigned's previous construction of the term “translate relative to the opening, ” the undersigned finds that the meaning of the term here is readily apparent.
Accordingly, the undersigned RECOMMENDS no construction of the term “blocking segment configured to translate relative to the opening [along the shorter-first dimension] between a closed position where the flow of air through the opening is restricted, and an open position where the flow of air through the opening is less restricted” is required.
8. Disputed Term - “Closed Position”
• Plaintiff's proposed construction: Plain and ordinary meaning.
• Defendant's proposed construction: “Completely blocked position.”
• Court's recommended construction: No construction required.
The term “closed position” appears in Claims 1, 7-9, 13, 15-18, 20 and 24-26 of the' 588 Patent. '588 Patent, Col. 12, lines 18, 23, 45, 48, 59; Col. 13, lines 10, 18, 21, 24, 31; Col. 14, lines 3, 11, 26-27, 30, 33. In Independent Claims 1, 9 and 18, the term refers to a position in which the blocking segment can be configured, “where the flow of air through the opening is restricted . . . .” See, e.g., '588 Patent, Col. 12, lines 17-19 (emphasis added). However, Dependent Claims 7, 16 and 25 refer to the “flow of air thought the opening [being] completely blocked when the blocking segment is in the closed position.” See, e.g., '588 Patent, Col. 12, lines 43-45 (emphasis added). Dependent Claims 8, 17 and 26 also note that the “blocking surface of the blocking segment contacts the opening when the blocking segment is in the closed position.” See, e.g., '588 Patent, Col. 12, lines 46-48 (emphasis added).
Plaintiff argues that the jury will be able to readily understand the meaning of the term “closed position, ” so no construction is needed. Pl.'s Mem. [DE-120] at 32. Defendant argues that in light of inventor and expert testimony, a closed position requires that the airflow be “completely blocked.” Def.'s Mem. [DE-123] at 31. Specifically, Defendant argues that both the named inventor and experts testified that “in order for the exhalation pressure to be at its maximum, ” a completely closed position is required. Id. Because the term is readily understood by its plain language and context within the claim, no further construction is needed.
In the claims, the plain language of the term closed position, refers to the position in which the blocking segment either restricts, or in some dependent claims completely blocks, air from passing through the opening. While Defendant's contend that the closed position means that airflow is “completely blocked, ” the language used in Independent Claims 1, 9 and 18 evince that airflow through the opening is merely restricted when the blocking segment is in the closed position. This meaning is further supported by the additional limitation in Dependent Claims 7, 16 and 25, wherein the flow of air is completely blocked. See Phillips, 415 F.3d at 1312 (“The presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Wyeth, 570 F.Supp.2d at 820 (citing Saunders, 492 F.3d at 1331; Honeywell, 488 F.3d at 994) (“The absence of a limitation in the independent claim is ‘strong evidence' that the independent claim is not bound by the limitations listed in the narrower, dependent claims.”). The additional limitation in Dependent Claims 7, 16 and 25 would be rendered superfluous if the term closed position were to be constructed to mean that all airflow was completely blocked in every claim.
The specification also supports that the closed position does not mean completely blocked. As acknowledged by Defendant, the specification states that some air can still pass through the opening even in a closed position. In relevant part, the specification states:
Referring to FIG. 4, the restrictor member is shown in a closed position. The restrictor member 142 moves to a closed position when the restrictor member 142 is rotated to a position where a blocking segment 146 substantially blocks the chamber inlet 136 and the flow path 140 through the cross-sectional area of the chamber inlet 136 is substantially restricted by the restrictor member 142. Thus, when the restrictor member 142 is in a closed position, substantially no exhaled air passes through the chamber inlet 136. It should be understood that a complete seal need not be formed at the chamber inlet 136 between the restrictor member 142 and the housing 132. A small amount of exhaled air may be permitted to pass through the chamber inlet 136 when the restrictor member is in the closed position. Nevertheless, in the closed position, exhalation pressure at the chamber inlet 136 is at a maximum.'588 Patent, Col. 6, lines 17-32 (emphasis added). While Defendant attempts to import additional limitations into the term closed position, the meaning of the term closed position is readily apparent by the plain language in the claims, read in light of the specification.
Accordingly, the undersigned RECOMMENDS no construction of the term “closed position” is required.
9. Disputed Term - “Restricted”
• Plaintiff's proposed construction: Plain and ordinary meaning.
• Defendant's proposed construction: “Completely blocked.”
• Court's recommended construction: No construction required.
The term “restricted” appears in Claims 1, 9 and 18 of the '588 Patent. Each asserted claim notes a blocking segment that rotates between “a closed position where the flow of air through the opening is restricted, and an open position where the flow of air through the opening is less restricted.” '588 Patent, Col. 12, lines 17-21, 57-61; Col. 13, lines 30-34 (emphasis added).
Plaintiff argues that “[s]imilar to the ‘closed position' limitation, ‘restricted' is readily understandable by the jury, and does not require further construction.” Pl.'s Mem. [DE-120] at 33. Defendant argues that “[f]or the same reasons discussed in the previous section, the proper construction of ‘restricted' . . . is ‘completely blocked,' because anything less than completely blocked would not result in the described maximum exhalation pressure.” Def.'s Mem. [DE-123] at 32. Because the term is readily understood by its plain language and context within the claim, no further construction is needed.
For the reasons discussed above in Section III.B.8, the undersigned finds that the meaning of the term “restricted” is readily apparent by the plain language of the claims and read in light of the specification. Defendant's proposed construction would add additional limitations to the term restricted, which do not appear in the '588 Patent. Further, Defendant's proposed construction would run contrary to the doctrine of claim differentiation, under which it is presumed that the additional limitation of “completely blocked” airflow in Dependent Claims 7, 16 and 25 is not a limitation in the independent claims.
Accordingly, the undersigned RECOMMENDS no construction of the term “restricted” is required.
10. Disputed Term - “Blocking Surface”
• Plaintiff's proposed construction: Plain and ordinary meaning.
• Defendant's proposed construction: “The portion of the blocking segment that contacts the opening to completely block the flow of air through the opening.”
• Court's recommended construction: No construction required.
The term “blocking surface” appears in Claims 1, 8, 9, 17, 18 and 26 of the '588 Patent. Each asserted claim deals with a respiratory treatment device in which the “size of a blocking surface of the blocking segment is equal to or greater than a size of the opening.” '588 Patent, Col. 12, lines 25-26, 62-63; Col. 14, lines 4-5 (emphasis added). Further, Dependent Claims 8, 17 and 26 involve respiratory treatment devices specifically in which “the blocking surface of the blocking segment contacts the opening when the blocking segment is in the closed position.” '588 Patent, Col. 12, lines 46-48; Col. 13, lines 22-24; Col. 14, lines 31-33 (emphasis added).
Plaintiff argues that the term “blocking surface” will be readily apparent to the jury in light of the intrinsic evidence. Pl.'s Mem. [DE-120] at 35. Defendant argues that the term relates to the portion of the blocking segment that contacts the opening, and that completely blocks the flow of air through the opening. Def.'s Mem. [DE-123] at 32. Because the term is readily understood by its plain language and context within the claim, no further construction is needed.
In the claims, the term blocking surface is described as relating to the blocking segment. For example, it is described as being “the blocking surface of the blocking segment ....” '588 Patent, Col. 12, lines 46-48; Col. 13, lines 22-24; Col. 14, lines 31-33. As discussed above in relation to Terms 6 and 7, the term “blocking segment” is not indefinite, but instead is the portion of the respiratory treatment device that moves between the open and closed position to restrict the flow of air. The plain language of the term “surface” means it is the top layer, or exterior, or outermost portion of an object. See, e.g., Surface, Webster's Third New International Dictionary 2300 (2002). Thus, the term blocking surface is readily understood by its plain language and context within the claim, to mean the outer surface or exterior of the blocking segment. This is further supported by both the '588 Patent claims and specification. The claims indicate that this is the portion of the blocking segment that “contacts the opening when the blocking segment is in the closed position.” '588 Patent, Col. 12, lines 46-48; Col. 13, lines 22-24; Col. 14, lines 31-33. The figures and brief description included in the specification demonstrate that the portion of the blocking segment that contacts the opening is the outermost part of the blocking segment.
Defendant's proposed construction here also imposes additional limitations on the term blocking surface. Defendant maintains that the term involves an object that “completely block[s] the flow of air through the opening.” Def.'s Mem. [DE-123] at 32-33. However, the claims themselves indicate that even in a closed position, the flow of air through the opening is only “restricted.” '588 Patent, Col. 12, lines 46-48; Col. 13, lines 17-21. Therefore, even when in a closed position when the blocking surface “contacts” the opening, the blocking surface does not require the flow of air to be completely blocked.
Accordingly, the undersigned RECOMMENDS no construction of the term “blocking surface” is required.
IV. CONCLUSION
For the reasons stated above, it is RECOMMENDED that the ten (10) disputed terms and phrases of the ‘588 patent are construed as set forth in this Memorandum and Recommendation.
IT IS DIRECTED that a copy of this Memorandum and Recommendation be served on each of the parties or their counsel. Each party shall have until April 1, 2022 to file written objections to this Memorandum and Recommendation. The presiding district judge must conduct his own review (that is, make a de novo determination) of those portions of the Memorandum and Recommendation to which objection is properly made and may accept, reject, or modify the determinations in the Memorandum and Recommendation; receive further evidence; or return the matter to the magistrate judge with instructions. See, e.g., 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 72(b)(3); Local Civ. R. 1.1 (permitting modification of deadlines specified in local rules), 72.4(b), E.D. N.C. Any response to objections shall be filed within 14 days of the filing of the objections.
If a party does not file written objections to the Memorandum and Recommendation by the foregoing deadline, the party will be giving up the right to review of the Memorandum and Recommendation by the presiding district judge as described above, and the presiding district judge may enter an order or judgment based on the Memorandum and Recommendation without such review. In addition, the party's failure to file written objections by the foregoing deadline will bar the party from appealing to the Court of Appeals from an order or judgment of the presiding district judge based on the Memorandum and Recommendation. See Wright v. Collins , 766 F.2d 841, 846-47 (4th Cir. 1985).