United States District Court, D. Delaware
before the Court is Defendant Toshiba Co.'s and Toshiba
America Information Systems, Inc.'s Motion for
Partial Summary Judgment (D.I. 423) and related briefing.
(D.I. 424, 479, 512). The Court held oral argument on October
18, 2017. (D.I. 573). For the reasons that follow,
Defendants' motion is denied in part as to anticipation
of asserted claims 1 and 5 of U.S. Patent No. 6, 734, 927.
moved for summary judgment (D.I. 423) on the basis that
Hasegawa, which is prior art to the '927 patent,
anticipates asserted claims 1 and 5 of that patent. (D.I. 424
dispute between the parties is over the construction of the
word "depression." (See Id. at 17).
Specifically, at issue is whether a "hole"
qualifies as a "depression." Claim 1 of the
'927 patent provides for a structure where "an
intermediate frame comprises a depression formed in the
vicinity of its end, the depression to be fitted to said
stepped protrusion." '927 Patent, col. 7 11. 4-6.
Hasegawa, on the other hand, refers to "holes, "
not "depressions." (See D.I. 429, Exh. 38
at 166:0010 (referring to "square engagement
hole[s]")). The parties do not dispute that if
"holes" qualify as "depressions, " then
Hasegawa anticipates asserted claims 1 and 5 of the '927
patent. (See D.I. 424 at 16; D.I. 479 at 16).
argue, pointing to Figure 7, that the '927 patent
"indicates that holes could be depressions, ending the
inquiry - [it] describes an embodiment that contemplates the
stepped protrusions fitting into holes to fix the
frames." (D.I. 424 at 17). Defendants assert that their
position is further supported by the testimony of
Defendants' expert, Mr. Smith-Gillespie, who "opined
that a person of ordinary skill in the art would have
understood 'depression, ' as used in the '927
Patent, to include a hole." (Id.). Finally,
Defendants fault Plaintiffs for basing their proposed
construction of "depression" on a definition from
Merriam-Webster's Dictionary. (Id. at 18).
Defendants, however, offer no evidence that
"depression" is ordinarily understood to include a
"hole." (D.I. 529 at 8).
counter that as their expert, Dr. Fontecchio, has opined, a
"depression is something that is lower or
'depressed, ' not something that is carved out and
missing entirely, such as a 'hole.'" (D.I. 479
at 17). Plaintiffs argue Defendants have failed to identify
any intrinsic or extrinsic evidence "that equates a
section missing from a structure (carved all the way through
it), such as the hole disclosed in Hasegawa, with a
depression." (Id.). Plaintiffs note that Figure
7, which Defendants contend indicates that "holes"
could be "depressions, " is a modified example of
the first embodiment of the invention, and, in contrast to
the claimed invention, does not include depressions in the
intermediate frame. (Id. at 18).
not persuaded by Defendants' argument that the proper
construction of "depression" includes
"holes." Nothing in the '927 patent suggests
that "depression" and "hole" are used
interchangeably and thus have the same meaning. See Bid
for Position, LLC v. AOL, LLC, 601 F.3d 113, 1317-18
(Fed. Cir. 2010) (finding "bid" and "value of
the bid" to have the same meaning where the claims and
specification used the terms interchangeably). To the
contrary, whereas a "depression" in claim 1 is
"to be fitted to said stepped protrusion, " the
"holes" in the description of Figure 7 are not
"to be fitted" to any "protrusion."
Rather, the "holes" in the intermediate frame allow
for the protrusions to pass through the intermediate frame so
that the upper and lower frames can be secured to each other.
See '927 Patent, col. 5 11. 45-48 ("[H]oles
may be formed in the intermediate frame 10 so that the
intermediate frame 10 is coupled between the upper and lower
frames 1A and IB folded to each other."). It is
therefore clear that the "holes" referred to in the
description of Figure 7 are not "depressions." This
construction is consistent with the "general presumption
that different terms have different meanings."
Chicago Bd. Options Exch, Inc. v. Int'l Sees. Exck,
LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012). Accordingly,
since nothing in the '927 patent suggests that a
"hole" is a type of "depression, "
Defendants' motion for summary judgment (D.I. 423) is
denied in part as to anticipation of asserted claims 1 and 5
of the '927 patent.
 Toshiba Corporation and Toshiba
America Information Systems, Inc. will be referred to
hereinafter as "Defendants."
 All docket references refer to
1:14-cv-00803-RGA unless otherwise ...