Proprietect L.P. v. Johnson Controls, Inc.

PROPRIETECT L.P., Plaintiff, v. JOHNSON CONTROLS, INC., Defendant.

Case No. 12-12953

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION

Date: December 23, 2013

Honorable Julian Abele Cook, Jr.

ORDER

On July 5, 2012, the Plaintiff, Proprietect L.P. ("Proprietect"), initiated this lawsuit, in which it has accused the Defendant, Johnson Controls, Inc. ("JCI"), of infringing upon two of its patents; namely, (1) U.S. Patent No. 7,481,637 ("the '637 patent") and (2) U.S. Patent No. 7,878,785 ("the '785 patent") (collectively identified hereinafter as "the Patents-in-Suit").

I.

The parties - now recognizing that they have reached a phase in this litigation wherein they collectively disagree on the meaning and significance of certain words and phrases that are arguably essential to a thorough understanding of the Patents-in-Suit - have submitted briefs to the Court pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996), seeking a judicial interpretation of several disputed terms used throughout the Patents-in-Suit. In light of the fact that this controversy centers around two patents from the samefamily, the Court will endeavor to provide universally applicable definitions.¹

I.

In broad terms, the Patents-in-Suit embody "a mold for producing foam articles." '637 and '785 patents, abstract. The '637 and '785 patents are from the same family, share a common specification, and are both titled "Vented Mold and Method For Producing Molded Article." On an abstract level, the molding process is fairly straightforward; the user injects a raw material into the cavity of the clamshell apparatus "wherein the raw material undergoes a physical change (e.g., it expands or foams) and the article produced thus acquires the shape of the cavity." '637 patent, Col. 1, line 19. This technique is often employed for producing foamed articles made from polyurethane and latex. Id. at Col. 1, line 23.

Of particular relevance here, automotive seats are commonly manufactured from polyurethane cushions that are molded into shape by the mechanism embodied in the Patents-in-Suit. One of the many problems that plagued first and second generation clamshell molds was a failure to provide adequate venting. '637 patent, Col. 2. When the air present in the mold is unable to escape as the foamable composition expands, the end product will often exhibit symptoms of surface hardening and/or void formation due to trapped gas or air bubbles. Id. at Col. 2, line 1. Furthermore, if there are too many vents in a particular mold, the opposite problem occurs; namely, some of the liquid composition will move into the vented area, resulting in wasted material that must be removed and discarded. Id. at Col. 2, line 5. For purposes of illustration, the '637 patent includes a rendering of its predecessor, seen below:

Image materials not available for display.

The Patents-in-Suit claim to have improved upon the inadequacies of the earlier generation molds through the development of a new approach to system venting. In specific, the inventors claim to have "discovered that the use of one more grooves/slots in the mold cavity surface effectively acts as a siphon to draw gas away from the composition to be molded." Id. at Col. 3, line 33. In the preferred embodiment of the invention, the improvement in design is claimed to reduce the number of vents required to achieve proper ventilation and, ultimately, the ability to produce articles that are substantially free of voids and underfill. Id. at Col. 9, line 61. From a design perspective, reducing the number of vents while improving the overall functionality of the mold is accomplished by instituting "one or more grooves (or slots) in the surface of the mold cavity [that] can be used as a conduit to funnel, draw, siphon, etc. gas to be vented to a conventional vent without the need to place a vent in each area where gas is expected to be vented." Id. at Col. 9, line 38. The figures below depict some of the modifications instituted in the'637 patent:

Image materials not available for display.

Although the parties dispute a number of the terms contained in the Patents-in-Suit, Claim 1 of the '637 patent is generally representative of both patents and reads as follows: (six of the disputed terms appear in bold italics)

1. A mold for producing molded articles, the mold comprising:

a first mold and a second mold releasingly engageable between an open position and a closed position, the closed position defining a mold cavity; and a surface of the mold cavity comprising a plurality of grooves connected to a plurality of vents, at least two of said vents being in fluid communication with each other through said plurality of grooves, each vent comprising a passageway for gas to escape from the mold cavity, each groove configured to have: (i) a depth of up to about 10 mm and a width, the depth being greater than or equal to the width, and (ii) a cross-sectional shape comprising an open portion having a first width of up to about 5 mm and an apex portion having a second width less than the first width.

Id. at Col. 15, line 49. (emphasis added). According to Proprietect, all of the disputed terms are simple, everyday words that should be given their plain and ordinary meaning. JCI, on the other hand, maintains that the terms should be narrowly construed in light of the surrounding claim language, specification, and prosecution history. As such, JCI urges the Court to supply specific constructions for each of the disputed terms so that the parties may tailor their litigation strategy accordingly.

II.

The parties have asked the Court to construe twelve disputed terms, all of which are found in the Patents-in-Suit; namely, the meaning of (1) "a surface of the mold cavity," (2) "the surface of the mold cavity," (3) "groove," (4) "each groove," (5) "a plurality," (6) "a plurality of vents," (7) "a plurality of grooves," (8) "said plurality of grooves," (9) "a plurality of grooves connected to a plurality of vents," (10) "a plurality of interconnected grooves," (11) "lid," and (12) "about." As detailed in Exhibit 1 to JCI's opening brief, (ECF No. 21) the disputed terms are used inconnection with several claims within the Patents-in-Suit.² Both parties have submitted briefs which express their respective beliefs regarding the proper construction of the terms at issue.

In 1995, the Federal Circuit Court of Appeals declared that a trial court should undertake a two step process when attempting to determine if a patent infringement has occurred; namely (1) construe all of the disputed claims, and (2) then determine if the accused product infringes upon any of the claims as properly construed. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996).

Claim construction is a matter of law which is the responsibility of the trial court to address and resolve. Cybor v. FAS Techs., Inc., 138 F. 3d 1448, 1456 (Fed. Cir. 1998). It is "the process of giving proper meaning to the claim language." Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). As such, this process is designed to "define the scope of the protected invention." Id. Claim construction is a legal issue, whereas a comparison to the accused product or the prior art are factual undertakings. TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002).

When construing claims, a court should initially consider the language of the patent claim. Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002). In the absence of an express intent to impart a novel meaning to a term within the claim, there is a "heavy presumption" that a term carries its ordinary and customary meaning to a person of ordinary skillin the relevant art. Id at 1325. Thus, when "construing claims, the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to 'particularly point out and distinctly claim the subject matter which the patentee regards as his own invention.'" Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (quoting 35 U.S.C. § 112). Dictionaries are often useful resources to assist the court in determining the ordinary and customary meanings of claim terms, as well as the meanings that would have been ascribed to technical terms by those of skill in the relevant art. Texas Ditigal Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002).

The trial courts are also encouraged to examine the intrinsic record in every case in order to "determine whether the presumption of ordinary and customary meaning is rebutted." Texas Digital, 308 F.3d at 1209. Although words in a claim are generally given their ordinary and customary meaning, "a patentee may choose to be his own lexicographer" and assign special definitions to the words in the claim, as long as those definitions are clearly stated in the patent specification or file history. Hoecsht Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996). Thus, intrinsic evidence can provide much needed "context and clarification about the meaning of claim terms." Teleflex, 299 F.3d at 1325.

The source of intrinsic evidence that a court should initially examine is the patent itself, including the claims, the specification, and, if in evidence, the prosecution history. Ductmate Industries, Inc. v. Famous Supply Corp., 55 F.Supp.2d 777, 782 (N.D. Ohio 1999) (citing Cybor Corp. V. FAS Tech., Inc., 138 F.3d. 1448, 1454 (Fed. Cir. 1998). However, "[a] construing court does not accord the specification, prosecution history, and other evidence the same weight as the claim itself, but consults these sources to give the necessary context to the claim language." Id.

Finally, although trial courts may examine extrinsic evidence, including inventor and expert...