Agarwal v. Morbarck, LLC

589 F.Supp.3d 716

Amit AGARWAL, Plaintiff,

v.MORBARCK, LLC, Defendant.

Case No. 1:20-cv-12150

United States District Court, E.D. Michigan, Northern Division.

Signed November 5, 2021

Amit Agarwal, Tampa, FL, Pro Se.

Robert Michael Azzi, Warner Norcross & Judd LLP, Grand Rapids, MI, for Defendant.

OPINION AND ORDER OVERRULING PLAINTIFF'S OBJECTION, OVERRULING DEFENDANT'S OBJECTION, AND ADOPTING REPORT AND RECOMMENDATION

THOMAS L. LUDINGTON, United States District Judge

This matter is before this Court upon Magistrate Judge Patricia T. Morris's Report and Recommendation and the objections of both Plaintiff Amit Agarwal and Defendant Morbarck, LLC. ECF Nos. 40; 41; 43. According to 28 U.S.C. § 636(b)(1) and Federal Rule of Civil Procedure 72(b)(3), this Court has reviewed de novo those portions of the Report and Recommendation to which Plaintiff and Defendant have objected. For the reasons stated hereafter, Plaintiff's objection will be overruled, Defendant's objection will be overruled, and the Report and Recommendation will be adopted.

I.

This case involves the alleged infringement of U.S. Patent 6,418,004 ("the Patent"), which describes a "safety system utilizing a passive sensor to detect the presence of a hand of a worker and provide a signal to interrupt the operation of a machine" (e.g., a mobile wood-chipping machine). ECF No. 1 at PageID.15. Plaintiff owns the Patent by assignment from one of the Patent's applicants, Mr. Corey Mather. ECF No. 31 at PageID.388.

The Patent's specification explains that serious accidents have occurred in the use of wood-chipping machines owing to the possible ensnarement of workers’ protective clothing. ECF No. 1 at PageID.15. A similar patent, distinguished by the applicant, used a metal sensor and metal-impregnated gloves. See ECF No. 38 at PageID.603. By contrast, Plaintiff's Patent uses (1) a "passive sensor incorporated into a band that the user wears", (2) a "sensing coil" mounted onto one of the chute's walls, and (3) "a [control circuitry] means for stopping the chipping blades and/or the feed rollers." ECF No. 38 at PageID.604; see also ECF No. 31-1 at PageID.355.

The parties dispute the construction of two relevant terms: "passive sensor" and "means for stopping the chipping blades and/or feed rollers." Thus, on May 6, 2021, Judge Morris held a hearing according to Markman v. Westview Instruments, Inc. , 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).

On August 31, 2021, Judge Morris issued her Report and Recommendation as to both terms. ECF No. 40. Judge Morris recommends (1) that "passive sensor" should be defined as "a device that uses coils to modify the electromagnetic field which is sensed by a circuit which converts this stimulus into an output as a consequence of sensed proximity without requiring a power source"; and (2) that "means for stopping the chipping blades and/or the feed rollers in response to the signal" should be construed as (a) "Function: stopping the chipping blades and/or the feed rollers in response to the signal"; and (b) "Structure: the solenoid valve and equivalents." ECF No. 40 at PageID.661, 666–67.

Each party has filed one objection. Plaintiff objects to Judge Morris's definition of "passive sensor." ECF No. 41. Defendant objects to Judge Morris's construction of "means for stopping the chipping blades and/or the feed rollers in response to the signal." ECF No. 43.

II.

Under Federal Rule of Civil Procedure 72, a party may object to and seek review of a magistrate judge's report and recommendation. See FED. R. CIV. P. 72(b)(2). If a party objects, "[t]he district judge must determine de novo any part of the magistrate judge's disposition that has been properly objected to." FED. R. CIV. P. 72(b)(3). The parties must state any objections with specificity and within a reasonable time. Thomas v. Arn , 474 U.S. 140, 151, 106 S.Ct. 466, 88 L.Ed.2d 435 (1985) (citation omitted). Parties cannot "raise at the district court stage new arguments or issues that were not presented" before the magistrate judge's final report and recommendation. See Murr v. United States , 200 F.3d 895, 902 n.1 (6th Cir. 2000).

When reviewing a report and recommendation de novo, this Court must review at least the evidence that was before the magistrate judge. See Hill v. Duriron Co. , 656 F.2d 1208, 1215 (6th Cir. 1981). After reviewing the evidence, this Court is free to accept, reject, or modify the magistrate judge's findings or recommendations. FED. R. CIV. P. 72(b)(3) ; Lardie v. Birkett , 221 F. Supp. 2d 806, 807 (E.D. Mich. 2002).

III.

The proper construction of a patent is a question of law. Teva Pharms. USA, Inc. v. Sandoz, Inc. , 574 U.S. 318, 325, 135 S.Ct. 831, 190 L.Ed.2d 719 (2015) (citing Markman v. Westview Instruments, Inc. , 517 U.S. 370, 388–91, 116 S.Ct. 1384, 134 L.Ed.2d 577 (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 citation and quotation marks omitted). But "there is no magic formula or catechism for conducting claim construction." Id. at 1324. Thus, the court is free to attach the appropriate weight to appropriate sources "in light of the statutes and policies that inform patent law." Id.

"[T]he 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 (POSITA)¹ in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1312–13 (footnote added) (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). Notably, the patent's "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).

Although "the claims themselves provide substantial guidance as to the meaning of particular claim terms," the court must consider the context of the claim's surrounding words. Phillips , 415 F.3d at 1314. Further, "[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). Similarly, any "[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). That "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 not be read into the independent claim." SunRace Roots Enter. Co. v. SRAM Corp. , 336 F.3d 1298, 1303 (Fed. Cir. 2003).

It is 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. Notably, "[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) ).

In 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, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The prosecution history, which is "intrinsic evidence," "consists of the complete records 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 that it would otherwise be." Id.

"In 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 of the meaning of a term in the relevant art during the relevant time period." Teva Pharms. USA, Inc. v. Sandoz, Inc. , 574 U.S. 318, 331, 135 S.Ct. 831, 190 L.Ed.2d 719 (2015). "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. Expert testimony can also help "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.

Yet courts must not lose sight of the fact that "expert reports and testimony [are] generated at the time of and for the...