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Paducah River Painting, Inc. v. McNational, Inc.

United States District Court, Sixth Circuit

December 17, 2013

PADUCAH RIVER PAINTING, INC. Plaintiff.
v.
McNATIONAL, INC., et al. Defendants.

CLAIMS CONSTRUCTION MEMORANDUM OPINION AND ORDER

THOMAS B. RUSSELL, District Judge.

This matter is before the Court upon the parties' respective Claim Construction Briefs. (Docket Nos. 79; 80.) The Court held a Markman hearing regarding the disputed claim terms on April 30, 2012. ( See Docket No. 83.) That hearing addressed the sundry of disputed claim terms submitted by the parties in their Joint Claim Construction Statement. ( See Docket No. 78.) The parties have responded to one another's Claim Construction Briefs, (Docket Nos. 81; 82), and also have submitted post- Markman Hearing Briefs in support of their respective constructions of the disputed terms, (Docket Nos. 86; 87). These matters now are fully briefed and ripe for adjudication. Upon considering the parties' respective Briefs, the evidence of record, and the arguments and testimony presented at the Markman hearing, the Court construes the disputed claim terms as set forth herein. This Opinion does not address the merits of the underlying patent infringement claim.

STANDARD

The interpretation and construction of a patent claim are questions of law to be answered by the Court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (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) (en banc) (internal quotation marks omitted). The terms of a patent claim are to be given the ordinary and customary meaning from the perspective of a person of ordinary skill in the art at the time the patent is filed. Chamberlain Grp., Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008). "[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313.

When construing claim terms, the Federal Circuit emphasizes that courts should look principally to the "intrinsic record, " which consists of the claims themselves, the patent specification, and the prosecution history. Id. at 1313-17. First, "the claims themselves provide substantial guidance as to the meaning of particular claim terms, " id. at 1314 (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)), and "the context in which term is used in the asserted claim can be highly instructive, " id. Second, because they "do not stand alone" but instead "are part of a fully integrated written instrument, " the "claims must be read in view of the specification, of which they are a part." Id. at 1315 (internal quotation marks omitted). On this point, the Federal Circuit advises that: "[T]he 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." Id. (internal quotation marks omitted) (quoting Vitronics, 90 F.3d at 1582). When reviewing the specification, however, courts must avoid reading limitations from the specification into the claims. Id. at 1323. To avoid importing limitations, a court must consider the purposes of the specification, which are to teach and enable those of skill in the art to make and use the invention and to provide the best way for doing so. Id. Third, "a court should also consider the patent's prosecution history, if it is in evidence." Id. at 1317 (internal quotation marks omitted). The prosecution history consists of the complete record of the proceedings before the U.S. Patent and Trademark Office (PTO) and includes the prior art cited during the examination of the patent. Id. "Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent... [and also] like the specification, the prosecution history was created by the patentee in attempting to explain and obtain the patent." Id. Typically, repeated words or phrases in the patent are construed to have the same meaning. Id. at 1314.

In addition to intrinsic evidence, courts may look to extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Id. (internal quotation marks omitted). "However, while extrinsic evidence can shed useful light on the relevant art... it is less significant than the intrinsic record in determining the legally operative meaning of claim language." Id. (internal quotation marks omitted) (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).

"Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (citing Markman, 517 U.S. at 389). "The 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." Id. Therefore, "[a] claim construction is persuasive, not because it follows a certain rule, but because it defines terms in the context of the whole patent." Id.

DISCUSSION

Plaintiff Paducah River Painting, Inc., filed this action alleging patent infringement against Defendants McNational, Inc.; McGinnis, Inc.; and National Maintenance & Repair of Kentucky, Inc. Plaintiff alleges that Defendants are infringing upon U.S. Patent No. 7, 837, 410 (hereinafter the '410 Patent), which outlines a system for refurbishing river barges. ( See Docket Nos. 1; 1-1.) River barges are flat-bottomed boats used to transport goods and other cargo on inland waterways. Over time, their painted hulls begin to corrode and must be refurbished in order to extend the life of the barge and improve its performance. Refurbishment, generally speaking, requires that the rust, debris, corrosion, etc., be removed from the barge's hull, which is then repainted or recoated before the barge is returned to service. Prior to the '410 Patent, one method by which refurbishment was accomplished was by removing the barge from the river, dry-docking it, blasting the hull with some abrasive media ( i.e., sandblasting), repainting the hull, and then returning the barge to the river.

The parties presently dispute the proper construction of twenty some-odd claim terms, phrases, or clauses with respect to the '410 Patent. In their Joint Claim Construction Statement, the parties have listed, in table format, each of the disputed claim terms along with their respective proposed construction of that term. Claim construction has two practical implications. First, construing the claims enables a fact finder to determine whether a patent may be invalid for failing to meet requirements of patentability. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001). Second, construing the claims allows for the determination whether an alleged infringer has infringed on a patent by doing that which is covered by any of the patent's claims. See id. In the following discussion, the Court will address each of the disputed terms in the order they are presented in the parties' Joint Claim Construction Statement. The Court will begin by reciting the parties' proposed construction of each disputed claim term. Then, employing the above principles of claim construction and considering the parties' proposals, the Court will set forth its construction of the disputed term.

A. "transport system"

The term "transport system" appears in Claims 1, 2, 3, 5, 6, 7, and 18. Claims 1 and 18 are independent claims, whereas Claims 2, 3, 5, 6, and 7 depend on Claim 1.[1] The parties propose the following competing constructions of the term "transport system":

[2]

Claim 1 reads, in relevant part:

A method of refurbishing a barge... the method comprising: submerging a transport system into a waterway;
moving the barge over the submerged transport system;
moving the transport system in contact with the barge such that the transport system securely supports the barge;
moving the transport system and barge from the waterway, up an embankment to an on-land position and away from the waterway;

(Docket No. 1-1, at 27 (emphasis added).) For purposes of this disputed term, the limitations expressed in the body of Claim 18 are substantially similar to those in Claim 1. ( See Docket No. 1-1, at 28.) The language of Claims 1 and 18 requires that the transport system be submerged, moved in contact with the barge such that it securely supports the barge, and then moved with the barge from the waterway up an embankment to an on-land position. The specification does not expressly define "transport system." The specification does, however, describe one embodiment as having a "first transport system" comprising a dolly having a "frame[] connected to casters or wheels, " or comprising "a rectangular base assembly connected to wheels." (Docket No. 1-1, at 22.)

Plaintiff argues that "transport system" is a simple and unambiguous term that should be construed using its ordinary meaning. Defendants disagree, pointing to the patent specification to argue that "[t]he first transport system must necessarily be a frame with wheels that is connected to and carried by another frame with wheels.'" (Docket No. 80, at 10.) Plaintiff insists that the Defendants' proposed construction "is a clear-indeed classic-attempt to limit the scope of the patent claim to the specific embodiment disclosed in the patent specification by importing limitations from the patent specification into the patent claim." (Docket No. 79, at 9-10.)

In a recent decision, Arlington Industries, Inc. v. Bridgeport Fittings, Inc., the Federal Circuit reaffirmed the notion that "even where a patent describes only a single embodiment, claims will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words of expressions of manifest exclusion or restriction." 632 F.3d 1246, 1254 (Fed. Cir. 2011) (quoting Martek Biosci. Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1381 (Fed. Cir. 2009); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)); accord Phillips, 415 F.3d at 1323 ("[W]e have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment."). The '410 Patent does not show a clear intent to limit the claim to an embodiment where "transport system" means "a frame with wheels that is connected by another frame with wheels, " as Defendants urge. Therefore, to adopt the Defendants' proposed construction would impermissibly limit the scope of the patent claims to the preferred embodiment. Instead, the Court agrees with Plaintiff that "transport system" does not mean anything other than "a system that transports something from one point to another." Furthermore, in light of the other limitations expressed in the body of Claim 1, it is clear that the transport system must be "submerged, " must "securely support[] the barge, " and must be moved with the barge "from the waterway, up an embankment to an on-land position." ( See Docket No. 1-1, at 27.) These limitations provide the necessary scope for the proper construction of the term "transport system." Therefore, in light of the intrinsic record, the Court finds that the ordinary and customary meaning of "transport system, " as understood in the context of the claimed invention by one skilled in the art at the time of the invention, is "a transport system that conveys the barge from one place to another" as limited by the terms and phrases in Claim 1, column 14, lines 32-38, and in Claim 18, column 16, lines 47-53.

B. "another transport system"

The term "another transport system" appears in Claims 1, 2, 3, 5, 6, and 7.[3] The parties propose the following competing constructions of the term "another transport system":

The Court's construction of "transport system" supra Part A would appear to dispose of the dispute over the instant term "another transport system." The only difference in the two terms is the addition of the word "another." The term "another" has no specific definition in the '410 Patent and thus is interpreted using its plain and ordinary meaning, which is simply a transport system other than the transport system first mentioned in Claim 1. Thus, the Court concludes that no further construction of this term is necessary.

C. "transferring the barge from the transport system to another transport system"

The term "transferring the barge from the transport system to another transport system" appears in Claims 1, 2, 3, 5, 6, and 7. The parties propose the following competing constructions of this term:

[4]

Defendants argue that because the preferred embodiment contemplates that the barge is transferred at an on-land position, the meaning of this term should be informed by the specification to require that the "transferring" occur at the on-land position. (Docket No. 80, at 16.) Thus, Defendants urge that the proper construction should include the added language "at the on-land position." The Court disagrees and again declines to import this limitation from the patent specification into Claim 1. Accordingly, the Court concludes that no further construction of this term is necessary.

D. "securely supports the barge"

The term "securely supports the barge" appears in Claims 1, 2, 3, 5, 6, 7, and 18. The parties propose the following competing constructions of the term "securely supports the barge":

As noted supra Part A, the term "securely supports the barge" appears in independent Claims 1 and 18 in the limiting language "moving the transport system in contact with the barge such that the transport system securely supports the barge." (Docket No. 1-1, at 27-28.)

In this instance, neither party's proposed construction is particularly compelling. The Defendants' proposed construction seeks to import a number of limitations from the preferred embodiment into the patent claims, such as by defining "securely supports" to mean "securely connected, " by limiting the transport system to a "frame, " and by requiring that the transport system carry and stabilize "the barge in a level orientation." On the other hand, Plaintiff's proposed construction seeks to broaden the scope of the claim language by effectively rendering the modifying adverb "securely" superfluous. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (instructing that claims should be "interpreted with an eye toward giving effect to all terms in the claim"). The parties' respective experts and their reports are also of little help. Ultimately though, the Court finds that the term "securely supports the barge" is relatively clear and unambiguous as written. Webster's Dictionary defines "securely" as "in a secure manner." WEBSTER'S THIRD INTERNATIONAL DICTIONARY (2013) [hereinafter WEBSTER'S], http://unabridged.merriam-webster.com/unabridged/securely. The Court is of the opinion that the word "securely" in the term "securely supports the barge" can be readily understood by a jury to have its plain, ordinary meaning of "supporting the barge in a secure manner." As such, the Court declines to adopt either party's proposed construction and instead finds that no further construction of this term is necessary.

E. "up an embankment to an on-land position"

The term "up an embankment to an on-land position" appears in Claims 1, 2, 3, 5, 6, 7, 17, and 18. The parties propose the following competing constructions of the term "up an embankment to an on-land position":

The crux of the dispute over this claim term appears to be whether "an embankment" and "an on-land position" are mutually exclusive or, instead, whether the embankment itself can be considered an on-land position. In essence, Plaintiff argues that the embankment is an on-land position because the embankment is, in fact, on land and not in the waterway. Defendants, on the other hand, point to the preferred embodiment to argue that the barge must move to some location past the embankment (such as onto the shelf or berth) in order to reach "an on-land position."

In this instance, the Court finds that the prosecution history of the '410 Patent makes clear that "on-land position" merely means a position on land and out of the waterway. In its back-and-forth with the PTO, Plaintiff distinguished the '410 Patent from prior art in which a dry dock is positioned in the waterway, stating that the '410 Patent teaches "a method for refurbishing the barge or a system for refurbishing the barge that moves the barge out and away from the waterway and to a position on land." (Docket No. 80-2, at 109.) Plaintiff thus made clear that "on-land position" was meant to refer to a position that "is located out and away from the waterway." (Docket No. 80-2, at 109.) In view of the intrinsic evidence, the Court is left with the certain impression that this claim language simply refers to a position "out of and away from the waterway." This position may be on the embankment itself, or it may be farther inland on the shelf or berth. The Defendants' proposed construction again seeks to import unnecessary limitations into the claim language. Therefore, the Court concludes that the ordinary and customary meaning of "up an embankment to an on-land position, " as understood in the context of the claimed invention by one skilled in the art at the time of the invention, is "up an embankment to a position out of and away from the waterway."

F. "an exterior surface of the barge"

The term "an exterior surface of the barge" appears in Claims 1, 2, 3, 5, 6, 7, 9, 10, 11, 12, 18, and 19. The parties propose the following competing constructions of the term "an exterior surface of the barge":

Each of the independent claims (Claims 1, 9, 18, and 19) uses the article "an, " as in "an exterior surface of the barge, " whereas each of the dependent claims (Claims 2, 3, 5, 6, 7, 10, 11, and 12) uses the article "the." (Docket No. 1-1, at 27-29.)

This disputed term turns on whether "an exterior surface of the barge" necessarily means "the entire outside of the hull of the barge, " as Defendants argue. ( See Docket No. 80, at 22.) Defendants, in their briefing, play loose with the interchangeability of "an" and "the." But these articles have distinct and settled meanings in the context of claim construction. In Baldwin Graphic Systems, Inc. v. Siebert, Inc., the Federal Circuit unequivocally defined the meaning of the term "an, " writing: "[T]his court 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.' That a' or an' can mean one or more' is best described as a rule, rather than merely as a presumption or even a convention." 512 F.3d 1338, 1342 (Fed. Cir. 2008) (internal quotation marks and citation omitted) (quoting KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). "An exception to the general rule that a' or an' means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule." Id. at 1342 (citing Abtox, Inc. v. Exitron Corp., 122 F.3d 1019 (Fed. Cir. 1997); Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098 (Fed. Cir. 1996)). Here, the record does not contain a clear indication that Plaintiff intended to depart from this rule, as nothing in the claim language, specification, or prosecution history compels an alternate reading of the indefinite article "an." Furthermore, the use of the definite article "the" in the dependent claims does not mandate a different construction for those terms. See id. ("[T]he use of a definite article (said' or the') to refer back to an initial indefinite article does not implicate, let alone mandate the singular.")

Of additional note, Defendants suggest that "exterior surface of the barge" must refer to the hull of the barge and not any of the top surfaces of the barge, such as the weather decks and hatch coverings, which are not typically blasted. Plaintiff does not appear to contest this point.

Accordingly, the Court concludes that the ordinary and customary meaning of "an exterior surface of the barge, " as understood in the context of the claimed invention by one skilled in the art at the time of the invention, is "one or more exterior surfaces of the hull of the barge."

G. "blast area" and "abrasive blast area"

The term "blast area" appears in Claims 1, 2, 3, 5, 6, 7, and 18. The term "abrasive blast area" appears in Claim 17. The parties propose the following competing interpretations of ...


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