United States District Court, D. Delaware
AOS HOLDING COMPANY and A. O. SMITH CORPORATION, Plaintiffs,
BRADFORD WHITE CORPORATION, Defendant.
C. Phillips, Jr. and David A. Bilson, PHILLIPS, GOLDMAN,
MCLAUGHLIN & HALL, P.A., Wilmington, DE S. Edward
Sarskas, MICHAEL BEST & FRIEDRICH LLP, Milwaukee, WI
Kenneth M. Albridge III, MICHAEL BEST & FRIEDRICH LLP,
Madison, WI Attorneys for Plaintiffs.
J. Koopman and Christopher H. Blaszkowski, RatnerPrestia,
Wilmington, DE Benjamin E. Leace, RatnerPrestia, King of
Prussia, PA Attorneys for Defendant.
U.S. DISTRICT JUDGE.
AOS Holding Company (“AHC”) and A. O. Smith
Corporation (collectively, “AOS” or
“Plaintiffs”) filed suit against Defendant
Bradford White Corporation (“BWC” or
“Defendant”) on March 16, 2018, alleging
infringement of U.S. Patent No. 8, 375, 897 (“the
'897 patent”). (D.I. 1) The '897 patent
“relates to a gas water heater, and more particularly
to a gas water heater that utilizes a power burner and an
exhaust plenum to permit natural convection exhaust of
products of combustion.” ('897 patent at 1:11-15)
Defendant moved for a “Super-Early Claim Construction
Hearing” because the single patent-at-issue has only a
single claim, which Defendant believed to be indefinite.
(D.I. 24-1 at 1) The Court issued its early claim
construction order and opinion on January 25, 2019,
construing the disputed term, “substantially entirely
under the influence of natural convection, ” to mean
“at a pressure near or below atmospheric pressure and
without the influence of the power burner, such that a
Category I venting system can be used.” (D.I. 61, 62)
On the present claim construction disputes, the parties
completed briefing on March 11, 2019 (D.I. 64, 65, 68, 69)
and the Court held a claim construction hearing on April 1,
2019. (See D.I. 73) (“Tr.”)
ultimate question of the proper construction of a patent is a
question of law. See Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v.
Westview Instruments, Inc., 517 U.S. 370, 388-91
(1996)). “It is a bedrock principle of patent law that
the claims of a patent define the invention to which the
patentee is entitled the right to exclude.”
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (citation and internal quotation marks omitted).
“[T]here is no magic formula or catechism for
conducting claim construction.” Id. at 1324.
Instead, the court is free to attach the appropriate weight
to appropriate sources “in light of the statutes and
policies that inform patent law.” Id.
words of a claim are generally given their ordinary and
customary meaning. . . . [which is] the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the
effective filing date of the patent application.”
Id. at 1312-13 (internal citations and quotation
marks omitted). “[T]he ordinary meaning of a claim term
is its meaning to the ordinary artisan after reading the
entire patent.” Id. at 1321 (internal
quotation marks omitted). The patent “specification is
always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.” Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
“the claims themselves provide substantial guidance as
to the meaning of particular claim terms, ” the context
of the surrounding words of the claim also must be
considered. Phillips, 415 F.3d at 1314. Furthermore,
“[o]ther claims of the patent in question, both
asserted and unasserted, can also be valuable sources of
enlightenment . . . . [b]ecause claim terms are normally used
consistently throughout the patent.” Id.
(internal citation omitted).
likewise true that “[d]ifferences among claims can also
be a useful guide . . . . For example, 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.” Id. at
1314-15 (internal citation omitted). This “presumption
is especially strong when the limitation in dispute is the
only meaningful difference between an independent and
dependent claim, and one party is urging that the limitation
in the dependent claim should be read into the independent
claim.” SunRace Roots Enter. Co., Ltd. v. SRAM
Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
also possible that “the specification may reveal a
special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess. In such
cases, the inventor's lexicography governs.”
Phillips, 415 F.3d at 1316. It bears emphasis that
“[e]ven when the specification describes only a single
embodiment, the claims of the patent will not be read
restrictively unless the patentee has demonstrated a clear
intention to limit the claim scope using words or expressions
of manifest exclusion or restriction.” Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed.
Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (alteration in
original) (internal quotation marks omitted).
addition to the specification, a court “should also
consider the patent's prosecution history, if it is in
evidence.” Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980 (Fed. Cir. 1995),
aff'd, 517 U.S. 370 (1996). The prosecution
history, which is “intrinsic evidence, ”
“consists of the complete record of the proceedings
before the [Patent and Trademark Office] and includes the
prior art cited during the examination of the patent.”
Phillips, 415 F.3d at 1317. “[T]he prosecution
history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and
whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it would
otherwise be.” Id.
some cases, . . . the district court will need to look beyond
the patent's intrinsic evidence and to consult extrinsic
evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during
the relevant time period.” Teva, 135 S.Ct. at
841. “Extrinsic evidence consists of all evidence
external to the patent and prosecution history, including
expert and inventor testimony, dictionaries, and learned
treatises.” Markman, 52 F.3d at 980. For
instance, technical dictionaries can assist the court in
determining the meaning of a term to those of skill in the
relevant art because such dictionaries “endeavor to
collect the accepted meanings of terms used in various fields
of science and technology.” Phillips, 415 F.3d
at 1318. In addition, expert testimony can be useful
“to ensure that the court's understanding of the
technical aspects of the patent is consistent with that of a
person of skill in the art, or to establish that a particular
term in the patent or the prior art has a particular meaning
in the pertinent field.” Id. Nonetheless,
courts must not lose sight of the fact that “expert
reports and testimony [are] generated at the time of and for
the purpose of litigation and thus can suffer from bias that
is not present in intrinsic evidence.” Id.
Overall, while extrinsic evidence “may be useful to the
court, ” it is “less reliable” than
intrinsic evidence, and its consideration “is unlikely
to result in a reliable interpretation of patent claim scope
unless considered in the context of the intrinsic
evidence.” Id. at 1318-19. Where the intrinsic
record unambiguously describes the scope of the patented
invention, reliance on any extrinsic evidence is improper.
See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics,
90 F.3d at 1583).
“[t]he construction that stays true to the claim
language and most naturally aligns with the patent's
description of the invention will be, in the end, the correct
construction.” Renishaw PLC v. Marposs Societa'
per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It
follows that “a claim interpretation that would exclude
the inventor's device is rarely the correct
interpretation.” Osram GmbH v. Int'l Trade
Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007)
(quoting Modine Mfg. Co. v. U.S. Int'l Trade
Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).
patent claim is indefinite if, “viewed in light of the
specification and prosecution history, [it fails to] inform
those skilled in the art about the scope of the invention
with reasonable certainty.” Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014).
may be indefinite if the patent does not convey with
reasonable certainty how to measure a claimed feature.
See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d
1335, 1341 (Fed. Cir. 2015). But “[i]f such an
understanding of how to measure the claimed [feature] was
within the scope of knowledge possessed by one of ordinary
skill in the art [POSA or POSITA], there is no requirement
for the specification to identify a particular measurement
technique.” Ethicon Endo-Surgery, Inc. v. Covidien,
Inc., 796 F.3d 1312, 1319 (Fed. Cir. 2015).