Boler Co. v. Neway Anchorlok, Intern., Inc.

92 F.Supp.2d 671

The BOLER COMPANY, Plaintiff, v. NEWAY ANCHORLOK, INTERNATIONAL, INC., Defendant.

No. 5:99CV1934.

United States District Court, N.D. Ohio, Eastern Division.

March 14, 2000.

David L Drechsler, David P. Dureska, John B Schomer, Karen K Grasso, Mark J. Skakun, Walter A Lucas, Buckingham, Doolitle & Burroughs, Akron, OH, for The Boler Company, plaintiff.

George T Williams, John E. McGarry, Michael F. Kelly, Rader, Fishman & Grauer, Grand Rapids, MI, Glenn E Forbis, Rader, Fishman & Grauer, Bloomfield Hills, MI, John C Fairweather, John W. Solomon, Brouse & McDowell, Akron, OH, for Neway Anchorlok International, Inc., defendant.

OPINION AND ORDER

GWIN, District Judge.

In this case, Plaintiff Boler Company claims Defendant Neway Anchorlok International, Inc. infringed its rights in U.S.Patent No. 5,366,237 ("the '237 patent"). Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), the Court now construes Plaintiff Boler Company's '237 patent.

I. Background

This case involves a popular suspension system used on heavy duty truck trailers known generally in the industry as "trailing arm suspensions" or "trailing beam suspensions." The '237 patent teaches improvements to air ride beam-type axle/suspension systems that have been used in the heavy-duty truck and trailer industry for many years.

Trailing beam suspension systems generally include two beams attached at their forward ends to the truck trailer frame. At the other end of each beam is a spring between the end of the beam and the trailer frame. Among other options, these springs can be coiled steel springs or air springs. Trailing beam suspension systems also have an axle that traverses the trailer and rests perpendicular to the beams. A wheel is attached to each end of the axle. These suspension systems cushion the trailer.

The '237 patent makes twenty-eight claims. Among these claims, Plaintiff Boler Company says Defendant Neway Anchorlok has infringed claims 16, 17, and 21. Claim 16 is an independent claim. Claims 17 and 21 are dependent claims that include all of the claim limitations of claim 16 plus additional elements. Claim 16 teaches as follows:

In an axle bearing suspension system for a wheeled vehicle wherein external forces imposed on the vehicle to which said suspension system is attached result in torsional forces being imposed on said axle, said suspension system including a brake actuation mechanism comprised of a brake chamber, an S-cam assembly comprising an S-cam bearing, a slack adjuster, an elongated beam, a pneumatic bellows located on said beam, a hanger bracket located at one end of said beam, means for rigidly connecting said axle to said beam, and a pivot connection for resiliently connecting said beam to said hanger bracket, the improvement comprising: means located on said beam for attaching said S-cam bearing directly to said beam, and means for directly attaching said brake chamber to said beam.

Claim 17, a dependent claim, claims the teaching of claim 16 together with a limitation that the axle bearing suspension system have the axle run through an orifice in the beam:

The suspension system of claim 16 wherein said means for rigidly connecting said axle to said beam comprises an orifice in said beam which substantially surrounds said axle and is rigidly attached thereto, thereby to prevent said axle from assuming a cross-sectional shape substantially different from its unstressed shape when said torsional forces are imposed upon it.

Here, the parties dispute the interpretation of plaintiffs '237 patent. Specifically, the parties dispute the construction of:

1. "elongated beam";

2. "means for rigidly connecting said axle to said beam";

3. "means located on said beam for attaching said S-cam bearing directly to said beam"; and

4. "means for directly attaching said brake chamber to said beam."

The Court now turns to a discussion of the rules governing the interpretation of the claims of the '237 patent.

II. Legal Standard

A determination of infringement requires a two-step analysis. "First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process." Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed.Cir. 1998); Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998).

The first step, claim interpretation, is solely a question of law. The construction of a patent is exclusively the province of the court, not the jury. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 383-91, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996); Cybor Corp. v. FAS Technologies, Inc. 138 F.3d 1448, 1451 (Fed.Cir. 1998).

In construing a patent claim, the Court looks first to the three sources of intrinsic evidence of record: the patent itself, including the claims, the specification, and, if in evidence, the prosecution history. See Genentech, Inc. v. Boehringer Mannheim GmbH, 989 F.Supp. 359 (D.Mass.1997) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)).

The claim language defines the scope of the claim. A construing court does not afford the specification, prosecution history, and other relevant evidence the same weight as the claim itself, but consults these sources to give the necessary context to the claim language. See Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 1552 (Fed.Cir. 1997).

In interpreting the claims and specification, the construing court interprets words "as one of skill in the art at the time of the invention would understand them." Eastman Kodak, 114 F.3d at 1555. In addition, "the court should also consider the patent's prosecution history ... in order to ascertain the true meaning of the language used in the patent claim." Markman, 52 F.3d at 980; see also Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir.1985) ("[T]he prosecution history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.").

Terms used in the claim are to be given their ordinary and customary meaning "unless another meaning is specified or evident from the patent history." Storer v. Hayes Microcomputer Products, 960 F.Supp. 498, 501 (D.Mass.1997).

Reliance upon extrinsic evidence is improper where the public record — the claims, specifications, and file history — unambiguously defines the scope of the claims. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed.Cir. 1996). Thus, the Court looks to extrinsic evidence to assist in construing a patent claim only if the intrinsic evidence is ambiguous.¹

Claim 16 of the '237 patent is expressed in means-plus-function format. Where a patent applicant chooses to use "means plus function" expressions, federal patent law says:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

35 U.S.C. § 112, ¶ 6 (emphasis added).

Under this statute, a functional claim element's "broad literal language ... must be limited to only those means that are `equivalent' to the actual means shown in the patent specification." Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 18, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). The statute restricts the scope of a functional claim limitation as part of a literal infringement analysis. See Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934 (Fed.Cir.1987).

The use of the word "means" creates a presumption that 35 U.S.C. § 112, ¶ 6 applies. See York Prods., Inc. v. Central Tractor, 99 F.3d 1568, 1574 (Fed.Cir.1996) ("In determining whether to apply the statutory procedures of [§ 112, ¶ 6], the use of the word `means' triggers a presumption that the inventor used this term advisedly to invoke the statutory mandates for means-plus-function clauses."). Failure to use the word "means" creates a presumption that § 112, ¶ 6 does not apply. See Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1213 (Fed.Cir.1998).

The parties agree that the '237 patent is stated in means-plus-function format.² As such, the Court interprets its claims under 35 U.S.C. 112, ¶ 6.

The Court now construes the patents at issue in this litigation.

III. Construing the '977 Patent

A. Construing "elongated beam"

Defendant Neway Anchorlok argues that "beam," as claimed by claim 16 of the '237 patent, should be construed to mean an integral elongated structural member in a suspension system that is similar to Figures 9-12 of the '237 patent. Referring to those figures, Plaintiff Neway Anchorlok argues that the beam must connect the beam to the axle without additional parts, including U-bolts, brackets, sleeves, or welds. As Neway Anchorlok interprets "beam," the axle must insert through some opening or orifice in the beam. Otherwise it would not rigidly connect the axle to the beam.³

In suggesting that "beam" be interpreted to require a member similar to Figures 9-12, Defendant Neway Anchorlok runs afoul of the doctrine of claim differentiation.

The doctrine of claim differentiation is ultimately based on the common sense notion that different words or phrases used in separate claims are presumed to indicate that the claims have different meanings and scope. See Karlin Technology, Inc. v. Surgical Dynamics, Inc. 177 F.3d 968, 971 (Fed.Cir.1999) (citing Comark Communications Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed.Cir.1998)). Thus, limitations stated in dependent claims are not normally read into the independent claim from which they depend. See id. (citing Transmatic, Inc. v. Gulton Indus.,...