United States District Court, N.D. Alabama, Southern Division
MEMORANDUM OPINION AND CLAIM CONSTRUCTION
MADELINE HUGHES HAIKALA UNITED STATES DISTRICT JUDGE.
a patent infringement action. Plaintiff Steyr Arms, Inc.
alleges that defendant Beretta USA Corporation infringes the
sole claim of U.S. Patent No. 6, 260, 301, entitled
“Pistol, Whose Housing Is Composed of Plastic”
(“the '301 Patent”). (Doc. 1, ¶ 7; Doc.
1-1, p. 1). Currently before the Court are the parties'
Joint Proposed Claim Construction Statement, their opening
claim construction briefs, and their responsive claim
construction briefs. (Docs. 28, 30, 31, 32, & 33). The
parties identified three claim limitations that are in
dispute. (Doc. 28). Upon careful consideration of the
'301 Patent, the parties' submissions, and the
controlling law, the Court now construes, or otherwise
addresses, the three disputed claim limitations.
Legal Standard for Patent Claim
Patent Act mandates that a patent specification, which is the
written portion of a patent, “shall conclude with one
or more claims particularly pointing out and distinctly
claiming the subject matter which the inventor or a joint
inventor regards as the invention.” 35 U.S.C. §
112(b) (2012); 35 U.S.C. § 112, ¶ 2
“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 (2005) (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Systems, Inc., 381 F.3d 1111,
1115 (Fed. Cir. 2004)); see also Thorner v. Sony Computer
Entertainment America LLC, 669 F.3d 1362, 1367 (Fed.
Cir. 2012) (“It is the claims that define the metes and
bounds of the patentee's invention.”) (citation
determine if a patent claim has been infringed, a court first
must determine the meaning and scope of the allegedly
infringed claims. E.g., Omega Eng'g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1320 (Fed. Cir. 2003) (citation
omitted). Determining the meaning and scope of a patent claim
is the purpose of claim construction, and it is a matter of
law for the court. O2 Micro Intern, Ltd. v. Beyond
Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed.
Cir. 2008) (quoting Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc),
aff'd, 517 U.S. 370 (1996)); Medical
Instrumentation and Diagnostics Corp. v. Elektra AB, 344
F.3d 1205, 1209 (Fed. Cir. 2003) (citation omitted).
Additionally, “[t]he proper construction of a
patent's claims is an issue of Federal Circuit
law.” David Netzer Consulting Eng'r LLC v.
Shell Oil Co., 824 F.3d 989, 993 (Fed. Cir. 2016)
construction begins with the language of the patent claim
itself. Nystrom v. Trex Co., Inc., 424 F.3d 1136,
1142 (Fed. Cir. 2005). “The words of a claim ‘are
generally given their ordinary and customary meaning' as
understood by a person of ordinary skill in the art at the
time of the invention.” David Netzer Consulting
Eng'r, 824 F.3d at 993 (quoting Phillips,
415 F.3d at 1312-13). The Federal Circuit has recognized
“only two exceptions to this general rule: 1) when a
patentee sets out a definition and acts as his own
lexicographer, or 2) when the patentee disavows the full
scope of a claim term either in the specification or during
prosecution.” Unwired Planet, LLC v. Apple,
Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quotation
omitted). For the second exception to apply, the
“disclaimer or disavowal of claim scope must be clear
and unmistakable . . . .” Id. (citation
patent claims “are part of ‘a fully integrated
written instrument, '” they must be read in light
of the patent specification. Phillips, 415 F.3d at
1315 (quoting Markman v. Westview Instruments, Inc.,
52 F.3d 967, 978 (Fed. Cir. 1995) (en banc),
aff'd, 517 U.S. 370 (1996)). In other words, a
court must look to the patent specification to determine the
meaning and scope of a patent claim. See e.g., David
Netzer Consulting Eng'r, LLC, 824 F.3d at 993-94.
The Federal Circuit has “long emphasized the importance
of the specification in claim construction.”
Phillips, 415 F.3d at 1315 (citations omitted).
“‘Usually, [the specification] is dispositive; it
is the single best guide to the meaning of a disputed [claim]
term.'” Id. (quoting Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
with the specification, a court should “‘consider
the patent's prosecution history, if it is in evidence,
'” when construing a patent claim. Id. at
1317 (quoting Markman, 52 F.3d at 980). The
prosecution history is the complete record of the proceedings
before the U.S. Patent and Trademark Office
(“PTO”). That history may provide evidence of how
the patent applicant and PTO understood the claimed
invention, or whether the applicant limited the scope of the
invention by disclaiming or disavowing the full scope of a
claim term. Id.; Vitronics, 90 F.3d at
1582-83. However, “because the prosecution history
represents an ongoing negotiation between the PTO and the
applicant, rather than the final product of that negotiation,
it often lacks the clarity of the specification and thus is
less useful for claim construction purposes.”
Phillips, 415 F.3d at 1317 (citing Inverness
Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373,
1380-82 (Fed. Cir. 2002)).
claim construction, before considering extrinsic evidence, a
court should consider intrinsic evidence, which consists of
the patent claims, the specification, and the patent's
prosecution history. See Spectrum Int'l, Inc. v.
Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir.
1998). “‘[I]f upon examination of this
intrinsic evidence the meaning of the claim language is
sufficiently clear, resort to extrinsic evidence, such as
treatises and technical references, as well as expert
testimony when appropriate, should not be
necessary.'” Id. (quoting Digital
Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347
(Fed. Cir. 1998)); see also Interactive Gift Exp., Inc.
v. Compuserve Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001)
(“Relying on extrinsic evidence to construe a claim is
‘proper only when the claim language remains genuinely
ambiguous after consideration of the intrinsic
evidence.'”) (quoting Bell & Howell Doc.
Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 701, 706 (Fed.
type of patent claim limitation with its own rules of
construction is a means-plus-function limitation. In a
means-plus-function limitation, a patentee expresses a claim
limitation as a function to be performed rather than by
reciting the structure or material for performing that
function. See 35 U.S.C. § 112(f) (2012); 35
U.S.C. § 112, ¶ 6 (2000); Northrop Grumman Corp. v. Intel
Corp., 325 F.3d 1346, 1349-50 (Fed. Cir. 2003). Pure
functional claiming is not permitted by the Patent Act, and a
patentee must disclose the structure or material for
performing the claimed function in the patent specification.
See, e.g., Aristocrat Technologies Australia Pty Ltd. v.
Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.
2008) (citations omitted). “If the specification does
not contain an adequate disclosure of the structure that
corresponds to the claimed function, the patentee will have
failed to particularly point out and distinctly claim the
invention under § 112, ¶ 2, which renders the claim
invalid for indefiniteness.” Advanced Ground Info.
Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1349 (Fed.
Cir. 2016) (quoting Blackboard, Inc. v. Desire2Learn,
Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009) (internal
§ 112, ¶ 6, “a means-plus-function claim
limitation is limited to the structures disclosed in the
specification [for performing the claimed function] and
equivalents.” Mettler-Toledo, Inc. v. B-Tek Scales,
LLC, 671 F.3d 1291, 1296 (Fed. Cir. 2012) (citation
omitted). Thus, evaluation of a means-plus-function claim
limitation involves a two-step process. First, a court must
“identify the particular claimed function.”
Medical Instrumentation and Diagnostics Corp. v. Elektra
AB, 344 F.3d 1205, 1209 (Fed. Cir. 2003) (quoting B.
Braun Med. Inc. v. Abbott Labs., 124 F.3d 1419, 1424
(Fed. Cir. 1997)). Second, a court must examine the patent
specification to determine the corresponding structure
described in the specification for performing the claimed
function. Id. “Under this second step,
structure disclosed in the specification is
‘corresponding' structure only if the specification
or prosecution history clearly links or associates that
structure to the function recited in the claim.”
Id. Structures described in the specification
“that do not actually perform the recited function do
not constitute corresponding structure and thus do not serve
as claim limitations.” Asyst Tech., Inc. v. Empak,
Inc., 268 F.3d 1364, 1370 (Fed. Cir. 2001) (citing
Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus.,
Inc., 145 F.3d 1303, 1308-09 (Fed. Cir. 1998));
Acromed Corp. v. Sofamor Danek Group, Inc. 253 F.3d
1371, 1382 (Fed. Cir. 2001).
these principles in mind, the Court turns to the patent at
issue in this infringement action.
Background of the Patent-in-Suit
owns by assignment the '301 Patent, which is directed to
a pistol with a housing composed of plastic and with a
removable “multifunction metal part” that is
inserted into the plastic housing. See U.S. Patent
No. 6, 260, 301 (filed Aug. 13, 1999). According to the
patent specification, the invention claimed in the '301
Patent is an improvement over the prior art because all of
the moving parts for the trigger mechanism can be mounted on
the multifunction metal part before the part is inserted into
the plastic housing. Id., col. 1 lines 47-51, col. 2
lines 52-64. The multifunction metal part is secured in the
plastic housing by a shaft that is inserted through holes in
the housing and corresponding holes in the multifunction
part. Id., col. 1 lines 62-67, col. 2 lines 43-47,
col. 4 lines 13-16. The multifunction metal part is further
secured in the housing by a projection from the end of the
multifunction part that fits in a recess in the rear wall of
the housing. See Id., col. 2 lines 39-42, col. 4
'301 Patent issued from an application filed on August
13, 1999. Id. The original application for the
patent contained four claims: claim 1 was an independent
claim, and claims 2-4 each depended upon claim 1.
(See Doc. 30-1, pp. 6, 16). During the prosecution of the patent
application in the PTO, the patent examiner rejected all four
claims in the application on the grounds that they were
indefinite and anticipated by three prior U.S. patents. (Doc.
30-1, pp. 6-11).
response to the examiner's rejection, the applicant
deleted claims 2 and 3 in the application, and amended claim
1 to incorporate the limitations from those claims. (Doc.
30-1, pp. 14, 16). Specifically, the applicant added the
following limitations to claim 1: “said multifunction
metal part and housing are each provided with a transverse
hole which receives a shaft for connecting the housing and
the multifunction metal part together, and wherein the
housing has a rear wall which is provided with a recess for
receiving a projection on the multifunction metal
part.” (Doc. 30-1, p. 14). The applicant provided that
“[c]laim 1 now sets forth with specificity the details
for supporting the multifunctional metal part in the housing
and this comprises a shaft and projections on the
multifunction metal part which interact with the rear wall of
the housing.” (Doc. 30-1, p. 16). Finally, the
applicant also amended claim 4 by adding the word
“control” before the phrase “means for
locking a barrel in the barrel slide.” (Doc. 30-1, pp.
those amendments, the examiner rejected amended claim 1 on
the grounds that it was anticipated by a prior U.S. patent
and found that amended claim 4, which incorporated all of the
limitations of amended claim 1, would be allowed to issue if
the applicant made a specific revision to the claim. (Doc.
30-1, pp. 21-22). The examiner rejected amended claim 4 as
indefinite, finding that “[i]n claim 4, line 3, the
phrase ‘a barrel' should be claimed as ‘said
barrel' if the previously claimed barrel is intended,
” and the examiner noted that “[c]laim 4 should
be allowable if rewritten to overcome the rejection . . .
.” (Doc. 30-1, pp. 21-22). The patent applicant made
the required revision and amended claim 1 to incorporate the
limitations that had been contained in amended claim 4. (Doc.
30-1, pp. 25-26). Specifically, the applicant incorporated
the following limitation into claim 1: “the
multifunction metal part includes control means for locking
said barrel in the barrel slide.” (Doc. 30-1, p. 26).
on those amendments, the '301 Patent issued on July 17,
2001 with a single claim:
1. A pistol comprising a housing; a barrel slide movably
mounted on the housing for movement in a firing direction
with respect to a barrel; and a trigger mechanism located, at
least in part, within the housing, the improvement which
comprises a multifunction metal part removably insertable
within said housing, said multifunction metal part being
provided with guides for the barrel slide and means for
supporting the trigger mechanism, said multifunction metal
part and housing are each provided with a transverse hole
which receives a shaft for connecting the housing and the
multifunction metal part together, the housing has a rear
wall which is provided with a recess for receiving a
projection on the multifunction metal part the multifunction
metal part includes control means for locking said barrel in
the barrel slide.
'301 Patent, col. 4, lines 5-20. (See also Doc.
30-1, p. 29). Steyr alleges that Beretta infringes the sole
claim of the '301 Patent.
parties dispute the construction of three claim limitations:
(1) “means for supporting the trigger mechanism;”
(2) “the multifunction metal part includes control
means for locking said barrel in the barrel slide;” and
(3) “housing has a rear wall which is provided with a
recess for receiving a projection on the multifunction metal
part.” (Doc. 28, p. 2). The parties agree that the
first two claim limitations require construction by the
Court, but only Beretta contends that the third limitation
requires construction. (Doc. 28, p. 2). Steyr contends the
third limitation may be construed according to the plain,
ordinary meaning of the terms and, therefore, requires no
construction by the Court. (Doc. 28). The Court will address
each of the disputed claim limitations in turn after first
dispensing with Beretta's argument that Steyr improperly
amended its proposed claim construction after the parties
filed their Joint Proposed Claim Construction Statement.
Beretta's objections to Steyr's amended proposed
to the Court's Scheduling Order (Doc. 26), the parties
exchanged proposed claim constructions for the disputed claim
limitations on August 5, 2016. (See Doc. 33-1).
Unable to resolve their disputes regarding the claim
limitations, the parties filed a Joint Proposed Claim
Construction Statement on August 19, 2016, which identifies
the three disputed claim limitations. (Doc.
28). In its
opening claim construction brief, Steyr proposed claim
constructions for the first two disputed claim limitations
that are broader than the constructions proposed in its
August 5 communication with Beretta. (See Doc. 31,
pp. 13, 18; Doc. 32, pp. 1-3; Doc. 32-1, pp. 2-3). Beretta
asserts that it was improper for Steyr to amend its proposed
claim constructions after the filing of the parties'
Joint Proposed Claim Construction Statement. (Doc. 32, pp.
1-2). Beretta argues that the Court should reject Steyr's
proposed claim constructions and adopt Beretta's claim
constructions based on Steyr's alleged non-compliance
with the Court's Scheduling Order and the Joint Proposed
Claim Construction Statement. (Doc. 32, pp. 2-4, 9-10). The
Court is not persuaded.
the parties exchanged proposed claim constructions on August
5, 2016, both parties reserved the right to modify their
proposed constructions. (Doc. 33-1, pp. 6, 11). In fact,
Beretta expressly reserved “the right to modify its
claim construction contentions . . . up until opening claim
construction briefs [were] due on September 16, 2016.”
(Doc. 33-1, p. 11). That statement is at odds with
Beretta's current contention that it is improper for a
party to amend its proposed claim construction after the
filing of the Joint Proposed Claim Construction Statement.
More importantly, Beretta has not cited authority to support
its contention that a court should adopt a party's
proposed claim construction solely because an opposing party
did not comply with the court's scheduling order.
(See Doc. 32). The Court has a duty to construe a
disputed claim limitation, O2 Micro Int'l Ltd.,
521 F.3d at 1362 (“When the parties present a
fundamental dispute regarding the scope of a claim term, it
is the court's duty to resolve it.”), and the Court
has found no authority indicating that it may abandon that
duty when a party does not comply with a scheduling order.
Accordingly, the Court will consider Steyr's proposed
Means for supporting the trigger mechanism
claim limitation, “means for supporting the trigger
mechanism, ” uses means-plus-function terminology,
invoking a presumption that the limitation should be
construed under § 112, ¶ 6. Advanced Ground
Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1347
(Fed. Cir. 2016) (“If a claim element contains the word
‘means' and recites a function, this creates a
presumption that the claim is in mean-plus-function form
under 35 U.S.C. § 112, ¶ 6.”) (quotation
omitted). That presumption is not rebutted by the recitation
of “structure sufficient to perform the claimed
function, ” and the parties agree that the limitation
is written in means-plus-function form. Id. (See
also Doc. 28, p. 2). Therefore, the Court will construe
the claim limitation pursuant to § 112, ¶ 6.
The claimed function
mentioned, in construing a means-plus-function claim
limitation, the Court first must identify the claimed
function. Medical Instrumentation and Diagnostics
Corp., 344 F.3d at 1210. Based on the claim language,
the function claimed in the first disputed claim limitation
is “supporting the trigger mechanism.” '301
Patent, col. 4, ln. 13. The parties agree that this is the
claimed function. (Doc. 30, p. 13; Doc. 31, p. 13 (“the
function is clearly to ‘support' or mount the
trigger mechanism”); Doc. 32, p. 5 (“Plaintiff
correctly identifies the claimed function, which is to
‘support' the trigger mechanism”)).
The structure corresponding to ...