Kenall Mfg. Co. v. H.E. Williams, Inc.

KENALL MANUFACTURING CO., Plaintiff,

v.H.E. WILLIAMS, INC., Defendant.

No. 09 C 1284

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION

DATE: February 1, 2013

Magistrate Judge Jeffrey Cole

MEMORANDUM OPINION AND ORDER

I.INTRODUCTION

Kenall alleges that HEW infringes two of its patents: Nos. 6,984,055 ("055 patent") and 7,494,241 ("241 patent"). The 241 patent is a continuation of the 055 patent, and the two patents share substantially identical specifications. With respect to the 055 patent, Kenall claims that HEW literally infringes independent claims 19 and 35, and dependent claims 23-28. It claims HEW infringes independent claim 1 and dependent claims 3-6 under the doctrine of equivalents. As for the 241 patent, Kenall asserts HEW literally infringes independent claims 1, 10, and 11, and dependent claims 2 and 6-9. It claims infringement of dependent claim 5 under the doctrine of equivalents.

The two patents-in-suit disclose lighting fixtures. Kenall's patents acknowledge that the prior art includes many different types of versatile light fixtures that come in "many engineering designs and configurations" for a variety of applications. (Col. 1:18-27). The patented light fixture, however, claims to improve the "versatility and adaptability of" prior art fixtures "in order to facilitate and enhance particular applications." (Col. 1:24-27). To overcome the limitation of priorart fixtures, the patented fixture uses components that can be connected together in various configurations. (See e.g., Col. 4:46-67). For example, the connectors - called bridges - have different shapes (e.g., linear, "L"-shaped, "T"-shaped, or "+"-shaped) in order to allow the connection of multiple housings in different configurations. (See Figs. 2, 10-12; Col. 1:48-50; Col. 2:9-14; Col. 6:58-Col. 8:12).

Subject Matter Of The Patents-In-Suit

The patented light fixture has four basic components: (1) a housing, (2) endplates attached to each end of the housing, (3) an endcap for attachment to an endplate to close off the open end of a housing, and (4) a bridge for attachment to endplates to connect adjacent light fixtures together. Annotated patent Figs. 1 and 2 show a single- and multi-unit fixture with these modular components.

Figures 10, 11, and 12 show bridges having different shapes, such as an "L," a "T," or a "+," connecting multiple housing sections in different configurations:

The heart of this case is the how the bridges and endcaps attach to the endplates and how the endplates attach to the housing. In all claims, these components must "seal" or "mate" together. In some claims, the components achieve a fluid-impervious seal with or without gaskets; in other claims, the components are "mated" together. Figure 4 provides a close up view of the end of a housing, an endplate, and a bridge to be attached to that endplate.Finally, within the housing of the fixtures are what are called "raceways," which are spaces through which media such as electrical wires pass.

The parties disagree over the construction of several terms in the claims at issue: "modular (lighting fixture)"; "isolated (raceway)"; "housing"; "endplate"; "sealing" and "mating"; "bridge"; and "adapted for attachment to any one of." Claim terms generally are construed in accordance with the ordinary and customary meaning they would have to one of ordinary skill in the art in light of the specification and the prosecution history. Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1329 (Fed.Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005)(en banc). The specification and prosecution history provide evidence of how the PTO and the inventor understood the claimed invention. Phillips, 415 F.3d at 1317.

In reviewing these sources, if the specification or prosecution history defines a claim term, that definition shall apply even if it differs from the term's ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366-67 (Fed.Cir.2002). Moreover, if a patentee makes a clear and unambiguous disavowal of claim scope during prosecution, that disclaimer informs the claim construction analysis by "narrow[ing] the ordinary meaning of the claim congruent with the scopeof the surrender." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed.Cir.2003). Courts may rely on dictionary definitions when construing claim terms, "so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents." Phillips, 415 F.3d at 1322-23 (internal quotation marks omitted).

A patentee may act as his own lexicographer, but must "clearly set forth a definition of the disputed claim term" other than its plain and ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002); Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 1365 (Fed.Cir. 2012). It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments; the patentee must "clearly express an intent" to redefine the term. Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed.Cir.2008); Thorner, 699 F.3d at 1365.

Finally, claim terms must be construed in light of the entirety of the patent, including its specification, and the specification to be consulted is that of the issued patent, not an earlier application. Sun Pharmaceutical Industries, Ltd. v. Eli Lilly and Co., 611 F.3d 1381, 1388 (Fed.Cir. 2010). Claim construction is not an exception to the rule that if words can be accorded their plain meaning, they must be so construed. Atlantic Research Marketing Systems, Inc. v. Troy, 659 F.3d 1345, 1354 (Fed.Cir. 2011). Similarly, hyper-technical readings of patents are to be avoided where they would arrive at an absurd result rather than achieve a common sense meaning. Lisle Corp. v. A.J. Mfg. Co., 398 F.3d 1306, 1313 -1314 (Fed.Cir. 2005).

Before the claims are addressed and construed, it should be noted that Kenall agreed to file the first claim construction brief, followed by HEW's response, and Kenall's reply. (Dkt. 39, at 2). A couple of weeks later, Kenall asked the court to reverse the schedule in line with the Local PatentRules. Under those rules, the parties are required to exchange lists of claim terms in dispute and their proposed definitions of those terms. LPR 4.1(a). The idea is that the parties' claim construction briefs should squarely address the disputed issues rather than be "ships passing in the night." See LPR, Preamble. To that end, the parties met on a number of occasions and, in the end, agreed to dispute eight claim terms and exchanged proposed constructions of those terms. HEW filed its opening brief based on those disputed claim terms and proposed constructions. Kenall, however, ignored the procedure. When it responded to Kenall's brief, it altered five of the eight constructions it had previously espoused. That left HEW to address claim constructions that Kenall apparently had no intention of standing by, or, in any event, had decided not to pursue.

II.CLAIM CONSTRUCTION

A.

"Modular" (Lighting Fixture)

Parties' Proposed Constructions

Kenall:

a lighting fixture of one or more standardized elongated sections and components for facilitating setup and arrangement

HEW:

a lighting fixture including standardized components to facilitate installation in one or more configurations

The term "modular" in reference to "lighting fixture" is found in the preamble to several claims in the two patents-in-suit. As a general rule, preamble language is not treated as limiting. Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1347 (Fed.Cir. 2012). The question becomes whether the preamble language is necessary to give meaning to the claims. 672 F.3d at 1347-48. A claim's preamble may limit the claim when the claim drafter uses the preamble to define the subject matter of the claim. August Technology Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284(Fed.Cir. 2011).

If the preamble "is reasonably susceptible to being construed to be merely duplicative of the limitations in the body of the claim (and was not clearly added to overcome a [prior art] rejection)," it is not construed as a separate limitation." Symantec Corp. v. Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1288-89 (Fed.Cir.2008). The preamble has no separate limiting effect if, for example, "the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention." American Medical Systems, Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed.Cir. 2010).

Still, it's not a simple matter to determine if a preamble is limiting. Even the Federal Circuit has struggled with the issue. See, e.g., Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 620 (Fed.Cir.1995) ("Much ink has, of course, been consumed in debates regarding when and to what extent claim preambles limit the scope of the claims in which they appear."); American Medical Systems, Inc. v. Biolitec, Inc., 618 F.3d 1354, 1363-64 (Fed.Cir. 2010)(Dyk, J.,dissenting)(". . . our case law has become rife with inconsistency, both in result and in the articulation of the test."); 3 Donald S. Chisum, Chisum on Patents § 8.06[1][d] (2010)("the decisions are difficult to reconcile."). In this case, Kenall wants the preamble read as limiting, but HEW does not.¹

Kenall argues that the preamble must be read as limiting because "the inventions are not applicable to street-pole lights, but rather to modular lighting fixtures." (Kenall's opening Claim Construction Brief, at 10). That's the sum total of Kenall's argument. It may have the visceralappeal of being simple, but it's overly simple and unamplified.

As opaque as the applicable case law is, HEW at least relies on it to state its position. To HEW, one need only read the preamble along with the claims of the '055 patent to see that the term "modular" can be left...