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Steyr Arms Inc. v. Beretta USA Corp.

United States District Court, N.D. Alabama, Southern Division

April 19, 2018

STEYR ARMS, INC., Plaintiff,
v.
BERETTA USA CORP., Defendants.

          MEMORANDUM OPINION AND CLAIM CONSTRUCTION ORDER

          MADELINE HUGHES HAIKALA UNITED STATES DISTRICT JUDGE.

         This is 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.

         I. Legal Standard for Patent Claim Construction

         The 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 (2000).[1] “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 omitted).

         To 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) (quotation omitted).

         Claim 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 omitted).

         Because 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. 1996)).

         Along 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)).

         During 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. Cir. 1997)).[2]

         One 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);[3] 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 alteration omitted).

         Under § 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).

         With these principles in mind, the Court turns to the patent at issue in this infringement action.

         II. Background of the Patent-in-Suit

         Steyr 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 lines 16-18.

         The '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).[4] 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).

         In 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. 14, 16).

         Following 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).

         Based 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.

         III. Analysis

         The 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.

         A. Beretta's objections to Steyr's amended proposed claim constructions

         Pursuant 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).[5] 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.

         When 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 claim constructions.

         B. Means for supporting the trigger mechanism

         The 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.

         1. The claimed function

         As 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”)).

         2. The structure corresponding to ...


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