FREDA L. WOLFSON, District Judge.
In this claim construction Opinion, the Court construes a patent for a "fence post accessory apparatus." After reviewing the parties' briefing and exhibits, and holding a Markman hearing, the Court adopts certain of the parties' proposed constructions and construes other claim terms in accordance with the intrinsic and extrinsic evidence. Accordingly, the Court construes the claims as set forth herein.
The patent that is the subject of this claim construction dispute, U.S. Patent No. 6, 722, 637 (the "637 Patent"), was originally filed by Patentees Michael Burkhart and Jeffery Herion on October 10, 2001, and later was assigned first to Stallion Fence Accessories, Denver, Colorado, and presently to LMT. The 637 Patent claims a fence post apparatus for synthetic fence posts, and more specifically, an apparatus to be attached to the top end of a synthetic fence post that may include a light emanating device. When the patent was filed, the prior art consisted of other apparatuses for placing a lamp on the top of a stake or post. As the 637 Patent abstract details, the claimed apparatus was intended to avoid the problem of structural degradation caused by attaching accessories to the top of synthetic fence posts. The 637 Patent sought to solve this problem by generally avoiding the necessary use of screws or other fasteners, relying instead on mountings that allow the apparatus to engage with the fence post in a secure manner. The nature of this feature claimed by the 637 Patent is one of the principal disputes in this Markman proceeding. Additionally, the 637 apparatus claims a structure that allows for light to be emitted from within the apparatus through "light emanating sidewalls." The parties dispute this structure-specifically the sidewalls' coatings or physical variations-claimed by the 637 Patent. This is the second principal dispute. Overall, the parties focus on 10 disputed claim terms or phrases requiring construction.
The patentees were awarded their patent on April, 20, 2004, with the patent now held by LMT. Claiming infringement upon the patent, LMT filed suit against Defendant Maine Ornamental ("Maine") in September 2010, see Civ. No. 10-4615(FLW), Defendant Home Tops ("Home Tops") in December 2010, see Civ. No. 10-6699(FLW), and Defendant McFarland in January 2011 (McFarland). See Civ. No. 10-0539(FLW). Before any meaningful motion practice or discovery, Maine Ornamental initiated exparte reexamination proceedings of the 637 Patent before the United States Patent and Trademark Office ("USPTO") on March 9, 2011. Pending reexamination, LMT's infringement suits were stayed as to each of the three Defendants. On August 28, 2012, the USPTO issued a reexamination certificate, on September 25, 2012, the stays were lifted, and on December 7, 2012, the three LMT actions against Maine, Home Tops, and McFarland were consolidated for pretrial purposes, including claim construction. On October 11, 2013, a Stipulation and Order of Dismissal with Prejudice was entered for LMT's claims against McFarland. See Civ. No. 11-0539(FLW), Dkt. No. 42. Maine and Home Tops (collectively, "Defendants") have filed their Markman briefs, and the Court held a Markman hearing on November 19, 2013, wherein it indicated that this written Opinion would follow.
Claims define the scope of the inventor's right to exclude. Phillips v. AWH Corp. , 415 F.3d 1303, 1312 (Fed. Cir. 2005). Claim construction determines the correct claim scope, and is a determination exclusively for the court as a matter of law. Markman v. Westview Instruments, Inc. , 52 F.3d 967, 978-79 (Fed. Cir. 1995) (en banc). Indeed, the court can only interpret claims, and "can neither broaden nor narrow the claims to give the patentee something different than what he has set forth" in the specification. E.I. Du Pont de Nemours v. Phillips Petroleum Co. , 849 F.2d 1430, 1433 (Fed. Cir. 1988).
This interpretive analysis begins with the language of the claims, which is to be read and understood as it would be by a person of ordinary skill in the art. Dow Chem. Co. v. Sumitomo Chem. Co. , 257 F.3d 1364, 1372 (Fed. Cir. 2001); see alsoMarkman , 52 F.3d at 986 ("[T]he focus [in construing disputed terms in claim language] is on the objective test of what one of ordinary skill in the art at the time of the invention would have understood the term to mean."); Phillips , 415 F.3d at 1312-13. In construing the claims, the court may examine both intrinsic evidence ( e.g. , the patent, its claims, the specification and prosecution history) and extrinsic evidence ( e.g. , expert reports, testimony and anything else). Pitney Bowes, Inc. v. Hewlett-Packard Co. , 182 F.3d 1298, 1309 (Fed. Cir. 1999). However, claims may not be construed with reference to the accused device, which means that the court may not, for example, construe a claim to fit the dimensions of the accused device, thus to prejudice the claim construction by "exclud[ing] or includ[ing] specific features of the accused product." Wilson Sporting Goods Co. v. Hillerich & Bradsby Co. , 442 F.3d 1322, 1330 (Fed. Cir. 2006).
In interpreting the disputed terms, it is well settled that the Court should look first to the intrinsic evidence. Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996); Phillips , 415 F.3d at 1313-14. Generally, words in patent claims are given their "ordinary and accustomed meaning as understood by one of ordinary skill in the art" at the priority date of the patent application. Dow Chem. , 257 F.3d at 1372; K-2 Corp. v. Salomon S.A. , 191 F.3d 1356, 1362 (Fed. Cir. 1999). The claims must be construed objectively in the context of both the particular claim and the entire patent because "the claims themselves provide substantial guidance as to the meaning of particular claim terms, " and claim terms are normally used consistently throughout the patent. Phillips , 415 F.3d at 1313-14.
In that regard, courts are instructed to look to the specification, which is a written description of the invention. "[C]laims must be read in view of the specification, of which they are a part.'" Id. at 1315 (quoting Markman , 52 F.3d at 979). Indeed, the specification is perhaps the single best guide to the meaning of a claim term due to its statutory requirements of being in "full, clear, concise, and exact terms." Id. at 1316; see 35 U.S.C. § 112. "The specification acts as a dictionary when it expressly" or implicitly defines terms used in the claims. Phillips , 415 F.3d at 1321. Thus, it effectively limits the scope of the claim. On Demand Mach. Corp. v. Ingram Indus., Inc. , 442 F.3d 1331, 1340 (Fed. Cir. 2006). Due to its nature, "the specification is always highly relevant to the claim construction analysis. Usually it is dispositive.'" Id. (quoting Vitronics Corp. , 90 F.3d at 1582). Extrinsic evidence includes all evidence external to the patent and prosecution history, i.e. , expert and inventor testimonies, dictionaries, and learned treaties. Markman , 52 F.3d at 980. It is considered only where the intrinsic evidence does not provide a sufficient description to resolve ambiguities in the scope of the claim. See Vitronics , 90 F.3d at 1583; Johnson Worldwide Assocs. v. Zebco Corp. , 175 F.3d 985, 989 (Fed. Cir. 1999). However, the Federal Circuit cautioned, in Phillips , that dictionary definitions should not be used to interpret patent claim terms in a manner that is divorced from the context and description of the invention in the specification. Phillips , 415 F.3d at 1321. The Phillips court reasoned that because of the nature of the patent claims, the dictionary definitions, as extrinsic evidence, are usually less reliable than the patent documents themselves in establishing the ordinary meaning of a claim term. Id. at 1314; Toro Co. v. White Consol. Indus. , 199 F.3d 1295, 1299 (Fed. Cir. 1999). Ultimately, extrinsic evidence cannot be used to vary or contradict claim terms when their meanings are discernible from intrinsic evidence. C. R. Bird, Inc. v. U.S. Surgical Corp. , 388 F.3d 858, 862 (Fed. Cir. 2004).
Overall, in construing the claims, "[t]he judge's task is not to decide which of the adversaries is correct. Instead, the judge must independently assess the claims, the specification, and if necessary the prosecution history, and relevant extrinsic evidence, and declare the meaning of the claims." Exxon Chem. Patents, Inc. v. Lubrizol Corp. , 64 F.3d 1553, 1556 (Fed. Cir. 1995); MEMS Technology Berhad v. International Trade Com'n , 447 Fed.App'x 142, 153 (Fed. Cir. 2011) (same).
A. Reexamination History and Prior Art
Before turning to the specific terms to be construed, I address the significance of the USPTO's ex parte reexamination of the 637 Patent, primarily because several of Defendants' construction arguments are based on statements and revisions made during the reexamination process.
After the USPTO approved the 637 Patent and after LMT filed infringement lawsuits based on the patent, Maine filed a request with the USPTO for ex parte reexamination of the 637 Patent. In its reexamination request, Maine argued, inter alia , that the independent claims of the 637 Patent were anticipated by the prior art teachings of U.S. Patent No. 5, 367, 442 to Frost et al. ("Frost") and U.S. Patent No. 5, 453, 729 to Chu et al. ("Chu"), which were not previously considered in the original patent examination. According to Maine, Frost claims a self-contained solar lamp and, in certain of the embodiments, identified the solar lamp on top of a post that could be inserted into the ground by stake, with the lamp contained inside a housing that has clear walls with apparent variations in the walls that could serve to diffuse or disperse the light. See Dkt. No. 32-2, at 32 (Maine's Request for Ex Parte Reexamination, March 9, 2011). Maine further explained that Chu claims a "solar warning light" with a light-emitting source enclosed in a transparent cylindrical casing that engages with a "fixing device" though a threaded means. Seeid. at 33. It was Maine's contention that both of these prior art patents anticipated the claims of the 637 Patent.
The UPSTO granted ex parte reexamination on the basis that a substantial new question of patentability was raised with respect to: independent Claims 1 and 15 under the prior art of Frost, and independent Claims 1 and 15 under the prior art of Chu. Specifically, the USPTO reasoned that under the 637 Patent requirements of "a light diffusing means for dispersing light emanating from within the hollow body" in Claim 1, and of a "single piece connector member" and "light diffusing means" in Claim 15: (1) Frost, taken alone, raised a substantial new question of patentability because "Frost teaches the use of a lens... which could be considered a light diffusing means and a single piece connector member, " and (2) Chu, taken alone, raised a substantial new question of patentability because "Chu teaches the use of a light reflecting lines... which could be considered a light diffusing means and a single connector member." Dkt. No. 32-2, at 61-63 (USPTO Reexamination Order, March 29, 2011).
During the reexamination proceeding, LMT agreed to amend the independent claims in the 637 Patent-Claims 1 and 15-by canceling certain dependent claims and integrating those claims into the appropriate independent claim; LMT also amended dependent Claim 11 into an independent claim. These changes did not otherwise alter the scope of the claims. Also during the reexamination proceeding, LMT agreed to amend the specification and independent claims to reflect that the claimed invention is "axially slidably engaged" with the connector member, as opposed to merely slidably engaged or axially engaged. See LMT Markman Reply, 10-11 (citing LMT's Jan. 30, 2012 Supplemental Reply to USPTO regarding Reexamination). LMT otherwise distinguished the 637 Patent from Frost by stating that Frost required a screw to engage the top piece to the connecting piece, whereas the 637 Patent's limitation that the connector member "be dimensioned to provide resistance to removal" obviated the need for such a screw. Id.
Based on these amendments, on August 28, 2012, the USTPO issued an ex parte reexamination certificate for the 637 Patent. Claim 1 was amended to include the following italicized language not included in the prior version:
1. A fence post apparatus comprising:
a fence post; a connector member for placement on a top end of said fence post and comprising a hollow body with a top end and a bottom end, wherein the hollow body includes sidewalls extending between said top and bottom ends to define an enclosed space, and where said sidewalls permit the passage of light therethrough and include a light diffusing means for dispersing light emanating from within the hollow body;
a top member having a first end for engaging said top end of the hollow body of said connector member; a first engaging means provided at said top end of said hollow body for engaging said top member; and second engaging means provided at said bottom end of said hollow body for engaging a top end of said fence post, wherein said first engaging means and said second engaging means are axially slidably engaging with said top member and a top end of said fence post respectively, said second engaging means is dimensioned to provide resistance to removal, and at least one of said first and second engaging means comprises multiple tabs, and wherein said tabs are receivable within a corresponding one of said top member and a top end of said fence post
637 Patent Reexam. Cert., Col. 1, lines 27-51. Claim 11 was amended to include the following italicized language not included in the prior version:
11. A fence post apparatus comprising:
a fence post;
a connector member for placement on the top end of said fence post and comprising a hollow body with a top end and a bottom end, wherein the hollow body includes sidewalls extending between said top and bottom ends to define an enclosed space, and wherein said sidewalls permit the passage of light therethrough and include a light diffusing means for dispersing light emanating from within the hollow body; engaging means provided at said bottom end of said hollow body for axially slidably engaging the top end of said fence post and dimensioned to provide resistance to removal; a top member having a first end for engaging said top end of the hollow body of said connector member;
a solar collector;
an energy storage device electrically interconnected to the solar collector; and
a light positioned within said connector member and electrically connected to the energy storage device.
Id. at Col. 1, lines 57-58 to Col. 2., lines 1-20. Claim 15 was amended to include the following italicized language not included in the prior version:
15. A fence post assembly comprising:
a fence post;
a single piece connector member for placement on an end of said fence post and comprising:
a hollow body with a top end a bottom end, wherein said hollow body extends between said top and bottom ends to define an enclosed space and permits the passage of light therethrough, wherein sidewalls of the hollow body comprise light diffusing means for dispersing light emanating from within said hollow body ;
first engaging means provided at said top end of said hollow body;
second engaging means provided at said bottom end of said hollow body for axially slidably engaging a top end of said fence post and dimensioned to provide resistance to removal ; and
a top member adapted to engage said first engaging means of said connector member, wherein said top member comprises a light supportably positioned within said hollow body .
Id. at Col. 2, lines 21-42. After the USPTO issued the reexamination certificate, this Court lifted the stay on the instant patent infringement litigation. It is from these amended claims, as well as other claim terms, that I construe the claims of the 637 Patent following the parties' briefing and oral argument on claim construction.
B. Preferred Embodiment Relevance
Before turning to the specific terms to be construed, I address an overarching dispute between the parties: the relevance of the preferred embodiments set forth in the 637 Patent to the instant claim construction.
Defendants largely rely on the preferred embodiments of the 637 Patent to set forth the basis for their proposed constructions of the disputed claim terms-for example, and as explained in more detail infra , that the proper construction of the light diffusing means for dispersing light is limited to the specific examples in the preferred embodiments, or that the first engaging means is a continuous sidewall and the second engaging means is a plurality of downward facing tabs, both of which are identified in the preferred embodiments. LMT, conversely, argues that it is inappropriate to import such restrictions from the description of a preferred embodiment into the claims absent an explicit instruction.
"Limiting claims from the specification is generally not permitted absent a clear disclosure that the patentee intended the claims to be limited as shown." MBO Labs., Inc. v. Becton, Dickinson & Co. , 474 F.3d 1323, 1333-34 (Fed. Cir. 2007) (citing Phillips, 415 F.3d at 1323). Similarly, the Federal Circuit has cautioned that it is generally inappropriate for a court to limit a claim to a specific preferred embodiment. Laryngeal Mask Co. v. Ambu A/S , 618 F.3d 1367, 1372 (Fed. Cir. 2010) (holding it improper to limit claims to the preferred embodiment without a clear intent that patent drafters restricted their claims to that preferred embodiment); see also Absolute Software, Inc. v. Stealth Signal, Inc. , 659 F.3d 1121, 1136 (Fed. Cir. 2011) ("It is true that, in some circumstances, a patentee's consistent reference to a certain limitation or a preferred embodiment as this invention' or the present invention' can serve to limit the scope of the entire invention, particularly where no other intrinsic evidence suggests otherwise."); Voda v. Cordis Corp. , 536 F.3d 1311, 1320 (Fed. Cir. 2008) (refusing to infer a limitation where parts of the specification referred to a certain embodiment as the "present invention" because the specification did not uniformly refer to the invention as being so limited, and the prosecution history did not reveal such a limitation).
Here, although the specification makes reference to several of the preferred embodiments, Defendants have pointed to nothing in the specification or prosecution history that shows the inventors intended to restrict the claims of the 637 Patents only to those preferred embodiments, such as consistent references to the embodiments as "present invention." Even then, the Federal Circuit has determined that "use of the phrase present invention' or this invention' is not necessarily limiting, such as where the references to a certain limitation as being the invention; are not uniform, or where other portions of the intrinsic evidence do not support applying the limitation to the entire patent." Absolute , 659 F.3d at 1136-37. Here, such explicit references are virtually absent from the specification. In that connection, I note that the specification itself warns against undue reliance on the preferred embodiment by explaining:
The embodiment described above is for exemplary purposes only and is not intended to limit the scope of the present invention. Various adaptations, modifications and extensions of the described assembly will be apparent to those skilled in the art and are intended to be ...