The opinion of the court was delivered by: Hon. Jerome B. Simandle
This patent lawsuit centers around United States Patent No. 6,467,230 (the "'230 patent"), an "invention relat[ing] to an interconnection device and method for securing a safety rail . . . to the frame of an access hatch." (Def.'s Br. Ex. A ("'230 patent"), col. 1, l. 6-10.) Plaintiff filed this lawsuit against Defendant, asserting that a device made and sold by Defendant -- the Bil-Guard Hatch Rail system (the "Bil-Guard") -- infringed on the '230 patent, and Defendant filed a counterclaim, arguing that the '230 patent is invalid.
Presently before the Court are the claim construction issues raised in the parties' Markman briefs. Originally, the parties disputed the meanings of eight terms,*fn1 which appear in the five claims asserted herein. Seven of the disputed terms appear in claim 1 of the '230 patent, upon which claims 2, 9, and 12 are dependent. The eighth term ("elongate post member") appears in claim 11 alone, although it is substantially similar to one of the disputed terms contained in claim 1. As the Court explains below, at the Markman hearing, the parties agreed to the construction of four of these terms.*fn2 For the reasons now explained, the Court will adopt the following constructions of the terms that remain in dispute.
This lawsuit centers around the '230 patent, which, according to the patent's specification, is an "invention relat[ing] to an interconnection device and method for securing a safety rail . . . to the frame of an access hatch." (Def.'s Br. Ex. A ("'230 patent"), col. 1, l. 6-10.) The specification describes the background from which the '230 patent invention emerged:
In order to comply with safety regulations it is known to secure a safety rail structure to a rigid frame which defines a roof hatch opening such as is commonly provided in a flat roof. In one known and established technique of constructing a safety rail structure, vertical posts for forming part of a safety rail assembly are welded to brackets that in turn are bolted to the hatch frame. In general[,] on[-]site welding of the posts to the brackets is not convenient and, in the case of brackets pre[-]secured to a roof hatch, on site welding creates an unacceptable risk of damage to the roofing material surrounding the hatch. It is therefore common practice to pre-weld the posts and brackets to one another, but that results in sub-assemblies of an inconvenient shape for storage and transportation.
The invention contained in the '230 patent provides (1) "an improved interconnection device and method for securing a post of a safety rail assembly to a hatch structure," (id., col. 1, l. 26-29), as well as (2) a "safety rail system for an access hatch  comprising discrete and interconnectable components . . ."*fn3 (Id., col. 2, l. 47-49.) That is, the invention, through its "interconnection device and method," provides a means of attaching the vertical post of a guardrail (the "safety rail") to the frame of an opening in a roof (the "hatch structure"), and the invention also provides a "safety rail system" attached to the interconnection device, which is composed of various interconnectable parts. The parties' disputes over claim construction turn primarily over disagreements regarding the terms used to describe the interconnection device itself, and the method for securing that device to the vertical post of the guardrail system.
The parameters of that interconnection device are described in claim 1 of the '230 patent, which, owing to its importance in this matter, is provided in full below:
A structural interconnection device for attachment of an elongate member to a rigid frame of an access hatch, said interconnection device comprising:
two flange portions each adapted for attachment to the rigid frame, and a receiving portion comprising locking means for selectively releasably securing thereto an end portion of an elongate member,
each said flange portion having a location surface for bearing against said rigid frame and said location surface lying, in use, in a plane which is substantially parallel with a longitudinal axis of an end portion of an elongate member secured to said receiving portion,
said plane of the location surface of one of said two flange portions lying, in use, in a plane displaced from said longitudinal axis of an end portion of the elongate member and extending substantially perpendicular relative to a plane of the location surface of an other of said two flange portions,
each of the two flange portions having a respective intermediate portion integrally connecting the location surface of said flange portion with the receiving portion, each said intermediate portion extending substantially parallel with one another and spaced apart from one another to define a void space therebetween,
and an end of the receiving portion extending beyond an edge of each flange portion location surface in the direction of said longitudinal axis.
(Id., col. 4, l. 36-64.)*fn4
Three of the four additional claims asserted in this matter are dependent upon claim 1, and they add additional limitations or features of the design of the interconnection device. Claim 2 provides for "[a]n interconnection device according to claim 1, wherein the flange and receiving portions are each formed from one of cast iron, steel or aluminium." (Id., col. 4, l. 65-67.) Claim 9 provides for "[a]n interconnection device according to claim 1, wherein an end of the receiving portion is aligned with an edge of the flange portion." (Id., col. 5, l. 26-28.) Claim 12 provides for "[t]he structural interconnection device as claimed in claim 1, wherein an angle between each said intermediate portion and each said flange portion is about 45E." (Id., col. 5, l. 49-51.) Finally, claim 11 describes the safety rail system and its constituent interconnectable parts, including "at least two of the interconnection devices as claimed in claim 1." (Id., col. 5, l. 33-48.)
Initially, the claim which ultimately issued as claim 1 of the '230 patent -- the claim describing the interconnection device -- was rejected by the United States Patent and Trademark Office (the "Patent Office") as having been anticipated by a different patent, United States Patent No. 6,279,880 (the "'880 patent"). The '880 patent was an invention concerning "temporary guard rails used on balconies and stairways during construction as onsite temporary fall protection systems," (Def.'s Br. Ex. D, col. 1, l. 4-7), and it included the parameters for an interconnection device with certain features which bear some resemblance to the device described in claim 1 of the '230 patent. (Id. at sheet 15, figure 27.)
The applicant for the '230 patent sought reconsideration of the rejection of the patent. Specifically, the applicant made the following arguments and representations to the Patent Office:
Reconsideration and withdrawal of the rejection are respectfully requested because the reference [to the '880 patent] does not disclose or suggest that each of the two flange portions have a respective intermediate portion integrally connecting a location surface of the flange portion with a receiving portion, each intermediate portion extending substantially parallel with one another and spaced apart from another to define a void space therebetween, as recited in amended claim 5 [which was later issued as claim 1] . . . .
An advantage of two flange portions each having a respective intermediate portion integrally connecting a location surface of the flange portion with the receiving portion . . . , is that the receiving portion is more securely and stably supported than if connected to the flange portion at only a single position . . .
(Def.'s Br. Ex. G at 9-10.) The language requiring that the flange portions have "a respective intermediate portion integrally connecting the location surface of said flange portion with the receiving portion, each said intermediate portion extending substantially parallel with one another and spaced apart from one another to define a void space therebetween," ('230 patent, col. 4, l. 55-60), which did not appear in the initial patent application, was added to the resubmission of the patent application, and this claim ultimately issued as claim 1 of the '230 patent. The term "integrally connecting" is one of the terms to be construed herein.
Plaintiff filed the Complaint [Docket Item 1] in this matter against Defendant on November 21, 2006, alleging that the Bil-Guard infringes on the '230 patent in violation of 35 U.S.C. §§ 271(a),(b), and (c).*fn5 In its Answer [Docket Item 4], Defendant asserted a counterclaim against Plaintiff, alleging that the '230 patent is invalid. Pursuant to Magistrate Judge Donio's November 12, 2008 Scheduling Order [Docket Item 23], the parties thereafter filed, inter alia, their opening and responding Markman briefs. ...