United States District Court, M.D. Alabama, Northern Division
RECOMMENDATION OF THE MAGISTRATE JUDGE
WALLACE CAPEL, JR. CHIEF UNITED STATES MAGISTRATE JUDGE
matter is before the court on the parties' opening,
responsive, and supplemental claim construction briefs.
See Docs. 37, 38, 45, 46, 94, and 95. The District
Judge has referred this matter to the undersigned United
States Magistrate Judge “for consideration and
disposition or recommendation, as may be appropriate, on all
pretrial matters, including discovery, the Markman
matter, and dispositive motions.” Doc. 27. On May 6,
2014, the undersigned held a Markman hearing, and,
on October 19, 2017, a supplemental Markman hearing.
See Docs. 49, 100. The issue of claim construction
in this patent infringement suit is now ripe for
recommendation to the District Judge. For the reasons that
follow, the undersigned RECOMMENDS that the court resolve the
parties' lone remaining dispute concerning the
construction of claim terms by concluding that no
construction of the disputed term, “terminal end,
” is required at this time, and that the term should
therefore be afforded its ordinary and customary meaning in
adjudicating Plaintiff's infringement suit.
Autoliv ASP, Inc. filed this patent infringement action
against Defendants Hyundai MOBIS Co., Ltd., and MOBIS
Alabama, LLC on March 4, 2013. See Doc. 1.
Plaintiff, a developer of technologies “related to
automobile safety restraint systems, including inflatable
automotive airbags[, ]” alleged in the Complaint that
Defendants infringed on two separate patents owned by it,
U.S. Pat. No. 7, 347, 450 (“the 450 Patent”) and
U.S. Pat. No. 7, 614, 653 (“the 653 Patent”),
both of which relate to technological designs of automotive
airbag systems intended to reduce injuries to out-of-position
vehicle occupants affected by airbag deployments. In
particular, the Complaint alleged that Defendants
“made, used, offered to sell, sold, and/or imported
into the United States airbags that infringe the claims of
[its patents] including, but not limited to, at least the
Safety Vent airbag found in the 2012 Hyundai Elantra, and
continues to do so, all without authority from the patent
holder.” Doc. 1 at ¶¶ 13, 21. According to
the Complaint, as it relates to the 450 Patent,
Defendants' allegedly infringing airbags “have
safety vents formed by cinch tubes with apertures controlled
by cinch cords configured so that, when [the] airbag is
obstructed, the cinch tubes remain open, but when the airbag
is unobstructed, the terminal ends of the cinch tubes enter
the interior of the airbag and the apertures close.”
Id. at ¶ 13. Furthermore, as it relates to the
653 Patent, Defendants' allegedly infringing airbags
“have a safety mechanism involving a cord connected to
at least one closeable vent that is configured to close upon
deployment without obstruction[, ]” and the
“closeable vent is configured to stay at least
partially open when the airbag deploys with
obstruction.” Id. at ¶ 21. On September
13, 2013, Defendants filed their Answer and Counterclaims
(Doc. 20) denying any infringement on Plaintiff's patents
and countersuing for a declaration that it has not so
infringed and that Plaintiff's patents are invalid.
Plaintiff filed its Answer (Doc. 25) to Defendants'
counterclaims on October 4, 2013.
parties filed their Joint Claim Construction and Prehearing
Statement (Doc. 34) on February 21, 2014. In that document,
the parties detailed their dispute regarding construction of
several terms in the claims of the 450 and 653 patents, as
well as their agreed-upon construction of two terms in claim
20 of the 450 patent. See Doc. 34-1. On March 21,
2014, the parties filed their Opening Claim Construction
Briefs. See Docs. 37, 38. In its opening brief,
Plaintiff argued that all of the disputed claim terms, save
“cinch tube(s), ” should be given their plain and
ordinary meaning. Doc. 37 at 12-38. Defendants, on the other
hand, offered proposed constructions of all eight of the
disputed claim terms across the 450 and 653 patents. Doc. 38
at 7-24. On April 22, 2014, the parties filed their
Responsive Claim Construction Briefs. Docs. 45, 46.
the court held the Markman hearing on May 6, 2014,
Defendants filed, on July 8, 2014, a Motion to Stay this
matter pending inter partes review of the subject
patents by the Patent Trial and Appeal Board
(“PTAB”). Doc. 53. On July 29, 2014, the
undersigned entered an Order (Doc. 62) granting
Defendants' motion for stay. On July 21, 2017, after
completion of inter partes review by the PTAB and
appellate review by the Federal Circuit Court of Appeals, in
which the patentability of all relevant claims of the 450
patent was affirmed, the undersigned entered an Order (Doc.
89) lifting the stay and directing the parties to file
supplemental claim construction briefs. Defendants filed
their supplemental brief (Doc. 94) on August 11, 2017, while
Plaintiff filed its supplemental brief (Doc. 95) on August
28, 2017. As recounted in the supplemental briefs, after
inter partes review and further discussions, there
remains only one claim construction dispute from the
parties' original dispute. See Doc. 94 at 1-3.
Defendants now contend that the term “terminal end(s),
” which appears in several claims in the 450 patent,
“represents a fundamental disagreement about the scope
of the asserted claims of the 450 patent, ” and
therefore requires construction. Id. at 3.
Defendants also propose a construction of “terminal
end(s).” Id. at 4. Plaintiff, on the other
hand, maintains that “terminal end(s)” should be
given its plain and ordinary meaning. Doc. 95 at 7-16. On
October 19, 2017, the undersigned held the supplemental
Markman hearing at which the parties presented
further argument regarding their positions on the lone
remaining disputed claim term.
alleges infringement of two of its patents. Before the court
may take up the issue of infringement, the meaning of the
words used in the claims of the subject patents must be
determined. See Markman v. Westview Instruments,
Inc., 517 U.S. 370, 374 (1996). As such, the first step
in adjudicating an infringement dispute is claim
construction. See Union Oil Co. of Cal. v. Atl. Richfield
Co., 208 F.3d 989, 995 (Fed. Cir. 2000). Claim
construction is a question of law to be decided by the court.
Markman, 517 U.S. at 390. Importantly, construction
of claim terms is required only when the “parties
present a fundamental dispute regarding the scope of a claim
term[.]” O2 Micro Int'l, Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir.
2008). However, “a court need not attempt the
impossible task of resolving all questions of meaning with
absolute, univocal finality.” Eon Corp. IP Holdings
v. Silver Spring Networks, 815 F.3d 1314, 1318 (Fed.
Cir. 2016). That is, “‘a sound claim construction
need not always purge every shred of ambiguity.'”
Id. (quoting Accumed LLC v. Stryker Corp.,
483 F.3d 800, 806 (Fed. Cir. 2007)). Moreover, because claim
construction is concerned only with the scope of the claims,
the court “should not resolve questions that do not go
to claim scope, but instead go to infringement[, ]”
under the guise of claim construction. Id. (citing
Lazare Kaplan Int'l, Inc. v. Photoscribe Techs,
Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010)).
the court is required to construe claim terms, “the
interpretation to be given to 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.” Phillips v. AWH Corp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (quoting Renishaw PLC v. Marposs
Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998)). Thus, the court's construction should
“stay true to the claim language and most naturally
align with the patent's description of the
invention.” Id. “It is a ‘bedrock
principle' of patent law that ‘the claims of a
patent define the invention[.]'” Id. at
1312 (quoting Innova/Pure Water, Inc. v. Safari Water
Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
2004)). Claim terms should normally be given their
“customary and ordinary 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[.]” Id. at 1312-13. Indeed, a party
seeking construction must overcome “a heavy presumption
that claim terms are to be given their ordinary and customary
meaning.” Aventis Pharm. Inc. v. Amino Chem.
Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013).
some cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in such
cases involves little more than the application of the widely
accepted meaning of commonly understood terms.”
Phillips, 415 F.3d at 1314 (citing Brown v.
3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)). However,
“determining the ordinary and customary meaning of the
claim” often “requires examination of terms that
have a particular meaning in a field of art. Because the
meaning of a claim term as understood by persons of skill in
the art is often not immediately apparent, and because
patentees frequently use terms idiosyncratically, ” the
court first considers the publicly-available intrinsic
evidence of the scope of the invention. Id.
(citation omitted). In order of importance as intrinsic
evidence, the court considers the claim terms themselves, the
patent's specification, and the patent's prosecution
claims themselves provide substantial guidance as to the
meaning of particular claim terms.” Id.
(citation omitted). Importantly, the court must consider the
context in which the disputed claim terms appear as well as
other claims of the patent in determining the ordinary and
customary meaning of the claim terms. Id. Beyond the
claim terms, the 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. at 1315 (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)). Courts “normally do not
interpret claim terms in a way that excludes disclosed
examples in the specification.” Verizon Servs.
Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305
(Fed. Cir. 2007). However, courts are instructed not to read
into the claim terms limitations from the specification.
Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d
1182, 1186 (Fed. Cir. 1998). In other words, the
specification should be considered “for the purpose of
better understanding the meaning of the claim; but not for
the purpose of changing it, and making it different from what
it is.” White v. Dunbar, 119 U.S. 47, 51
(1886). Finally, if in evidence, the patent's prosecution
history should also be considered. Phillips, 415
F.3d at 1317. While the “prosecution history provides
evidence of how the PTO and the inventor understood the
patent[, ]” it “represents an ongoing negotiation
between the PTO and the applicant, rather than the final
product of that negotiation[.]” Id. Thus,
“it often lacks the clarity of the specification and
this is less useful for claim construction purposes.”
from the above more significant and reliable sources of
intrinsic evidence, the court may look to extrinsic evidence,
“including expert and inventor testimony, dictionaries,
and learned treatises, ” to “shed useful light on
the relevant art.” Id. (quotation omitted).
However, while useful, extrinsic evidence is viewed “in
general as less reliable than the patent and its prosecution
history in determining how to read claim terms” because
it is not part of the patent, it may not accurately
“reflect the understanding of a skilled artisan in the
field of the patent, ” and because, if created for the
purposes of litigation, it may be the product of bias.
Id. at 1318. “In sum, extrinsic evidence may
be useful to the court, but it is unlikely to result in a
reliable interpretation of patent claim scope unless
considered in the context of the intrinsic evidence.”
Id. at 1319.
noted above, the only remaining claim term under dispute is
“terminal end.” Defendants submit that this term
must be construed because the parties fundamentally dispute
“the scope of the asserted claims of the patent.”
Doc. 94 at 4. In general, “terminal end”
describes one end of a “cinch tube” that is a
component of Plaintiff's patented ...