The opinion of the court was delivered by: Judge Caputo
Plaintiff Arlington Industries, Inc. ("Arlington") and Defendant Bridgeport Fittings, Inc. ("Bridgeport") are competitors in the field of electrical connectors. Arlington and Bridgeport were previously involved in litigation concerning allegations that certain Bridgeport connectors infringed two of Arlington's patents, U.S. Patent Nos. 5,171,164 ("the '164 Patent") and 5,266,050 ("the '050 Patent"). Arlington and Bridgeport settled this litigation in March of 2004. Bridgeport ceased selling the allegedly infringing electrical connectors and designed a new line of electrical connectors so as to not infringe Arlington's patents. Bridgeport has obtained its own patents for this new line of electrical connectors. Bridgeport began marketing this new line of connectors in 2005.
Thereafter, Arlington contacted Bridgeport, alleging that Bridgeport's new connectors infringed claim 8 of the '050 Patent and that Bridgeport had violated the terms of the settlement. Bridgeport then filed an action seeking a declaratory judgment that its new electrical connectors do not infringe the '050 Patent. This action was consolidated with the original litigation and is now pending before Judge Conner.
On May 31, 2006, Arlington filed this action, alleging that Bridgeport's new electrical connectors infringe claim 1 of a third patent held by Arlington, U.S. Patent No. 6,521,831 ("the '831 Patent"), as well as claim 8 of the '050 Patent. A Markman hearing was held on July 6, 2007, at which intrinsic and extrinsic evidence were presented and arguments were made.
The '050 Patent is entitled "Quick-Connect Fitting for Electrical Junction Box." (U.S. Patent No. 5,266,050 (filed Sept. 11, 1992), Pl.'s Ex. B, Doc. 3-3.) The '050 Patent is an invention which relates to connectors for electrical junction boxes, specifically to an improved connector that can be easily attached to an anchored junction box by pushing with one hand. Id.*fn1 Claim 8 of Arlington's '050 Patent is alleged to be infringed. Claim 8 provides:
A quick connect fitting for an electrical junction box comprising: a hollow electrical connector through which an electrical conductor may be inserted having a leading end thereof for insertion in a hole in an electrical junction box; a circular spring metal adaptor surrounding said leading end of said electrical connector which has a leading end, a trailing end, and an intermediate body; at least two outwardly sprung members carried by said metal adaptor near said trailing end of said adaptor which engage the side walls of the hole in the junction box into which said adaptor is inserted; at least two spring locking members carried by said metal adaptor that spring inward to a retracted position to permit said adaptor and locking members to be inserted in a hole in an electrical junction box and spring outward to lock said electrical connector from being withdrawn through the hole; and an arrangement on said connector for limiting the distance said connector can be inserted into the hole in the junction box. (Id. (emphasis added)).
The '831 Patent is entitled "Duplex Electrical Connector with Spring Steel Cable Retainer." (U.S. Patent No. 6,521,831 B1 (filed Aug. 29, 2001), Pl.'s Ex. A, Doc. 3-2.) The '831 Patent is an invention which relates to cable terminations and more particularly to duplex or two-wire cable terminations that snap into place and include snap-on cable retainers, neither of which requires twisting for locking.*fn2 Id. Claim 1of Arlington's '831 Patent is alleged to be infringed. Claim 1 provides:
A duplex electrical connector comprising:
a) a housing having a cylindrical outbound end, a generally oval inbound end, and an interior channel linking said inbound and said outbound end;
b) a pair of parallel openings in said inbound end;
c) a tubular spring steel cable retainer secured in each of said openings in said inbound end for accepting separate cables, said retainers including a set of inwardly extending tangs to receive and engage said separate cables inserted from said inbound end and guide said separate cables toward said cylindrical outbound end in a manner that said separate cables are advanced to said outbound end, said inwardly extending tangs restricting removal of said separate cables by force applied on said separate cables from said inbound end; and
d) a tubular spring steel adaptor secured to said cylindrical outbound end of said housing, said adaptor having outwardly extending tangs. Id. (emphasis added).
The "meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art . . . at the time of the invention . . . ." (Phillips v. AWH Corporation, 415 F.3d 1303, 1313 (Fed. Cir. 2005)(en banc), cert. denied, 126 S.Ct. 1332 (2006)). The starting point for determining how a person of ordinary skill in the art would understand a claim term "is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art." Id.
In Phillips v. AWH Corporation,*fn3 415 F.3d 1303 (Fed. Cir. 2005)(en banc), cert.denied, 126 S.Ct. 1332 (2006), the United States Court of Appeals for the Federal Circuit delineated the general principles of claim construction, stressing the importance of intrinsic evidence -- i.e., the patent's claims, specification and prosecution history -- and severely curtailing the role of extrinsic evidence -- i.e., expert and investor testimony, general and technological dictionaries, and learned treatises. Id.In so doing, the court renounced the approach to claim construction used in Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002),where the dictionary meaning of a claim term was heavily relied upon so as to not import a limitation from the specification into the claim. Id. at 1202.
In holding that intrinsic evidence serves as the best guide for construing a patent claim term, the court stated that "the claims themselves provide substantial guidance as to the meaning of a particular claim term." Id. at 1314."It is a bedrock principle of patent law that the claims of a patent define the innovation to which the patentee is entitled the right to exclude." Id. at 1312 (citation and quotation marks omitted). The context in which the claim term is used,*fn4 the other claims of the patent,*fn5 and the differences among the claims*fn6 can all help a court discern the meaning of a disputed claim term. Id.
The court reaffirmed prior holdings that the specification 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)).The court explained that there are several reasons why the specification must play an important role in the interpretation of a disputed claim term. Id. at 1315-17. First, the claims and the specification are part of a single "fully integrated" instrument. Id. at 1315 (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996)). Therefore, the claims "must be read in view of the specification." Id. Second, the specification must, by law, describe the claimed invention in "full, clear, concise, and exact terms." Id. at 1316 (quoting 35 U.S.C. § 112 ¶ 1). Third, the Patent and Trademark Office determines the scope of the claims in light of the specification and requires that the meaning of the terms in the claims be ascertainable by reference to the specification. Id. at 1316-17 (citing 37 C.F.R. § 1.75(d)(1)). However, the court did emphasize that the scope of claims should not be limited to the embodiments disclosed in the specification. Id. at 1323-24. The court stated that district courts should "avoid importing limitations from the specification into the claims." Id. at 1323.
The prosecution history should also be looked to in construing a claim because it "was created by the patentee in attempting to explain and obtain the patent." Id. at 1317. While it "often lacks the clarity of the specification," the prosecution history file can be useful in excluding any construction of a claim or term that was disclaimed during prosecution. Id. However, a court's reliance on prosecution history must be tempered with the recognition that a "prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation." Id. As such, the prosecution history "often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id.
The court reaffirmed that a district court may, in its discretion, use extrinsic evidence -- i.e., expert and inventor testimony, dictionaries and treatises -- to construe patent claims. Id. at 1319. The court observed that such evidence can be useful to educate the court in the field of art and may also help the court determine what one skilled in the art would understand the claim term to mean. Id.However, because it is "general[ly] . . . less reliable than the patent and its prosecution history," the court cautioned that extrinsic evidence should be accorded less weight than intrinsic evidence. Id. at 1317-18.*fn7
The court renounced the approach to claim construction taken by the court in Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002). There, the court looked at the dictionary definition of the disputed claim term first to ascertain its meanings and then looked at the specification and the prosecution history simply to check to see if the inventor limited the claim to only certain of the meanings rather than the full range of dictionary meanings. (Phillips, 415 F.3d at 1319-20.) This was done so as not to read a limitation from the specification into the patent claim. Id. at 1319.
While acknowledging that the Texas Digital court's concern was valid, the Phillips court rejected this approach as improperly restricting the role of the specification, which, as mentioned above, the court stated is "the single best guide to the meaning of a disputed term. Id. at 1321 (quoting Vitronics, 90 F.3d at 1582).The Phillips court reasoned that dictionaries focus on abstract meanings of a term rather than the context in which the term is used. Id. Significantly, starting with the many meanings included in the dictionary definition and then only eliminating those meanings disclaimed in the claims, specification and prosecution history, makes the claim overbroad. Id. This "risks transforming the meaning of the claim term." Id. Instead, the court suggested that it is better to first look to the specification and prosecution history to see how the inventor used the term in the context of the description and then use the dictionary to confirm this meaning. Id.*fn8
While the court did not go so far as to limit the use of extrinsic evidence in claim construction or require that intrinsic evidence be looked to first, the court did stress that more weight should be given to intrinsic evidence and that a court could never use extrinsic evidence to contradict the meaning of a claim term that is clear upon considering the intrinsic evidence. Id. at 1324.
The parties dispute the meaning of several terms contained within the '050 and '831 Patents. The constructions of these terms, including those constructions submitted by the parties, will be addressed in turn.
As noted above, the second paragraph of claim 8 of the '050 Patent requires an adaptor that is "circular." Bridgeport contends that "circular" should be construed to mean "cylindrical" or "tubular," such that the adaptor has a constant diameter at both the leading and trailing ends.Essentially, Bridgeport argues that "circular" cannot mean "conical." Arlington, on the other hand, argues that "circular" means "circular cross-sections," whether or not the adaptor has a constant diameter along its axial length.
a. How "Circular" should be Construed based on the Language and Context of the Claims
Looking first to the plain and ordinary meaning of the language of the claims, "circular" is used several times, each time to refer to the spring metal adaptor which is at the leading end of the electrical connector, as the "circular spring metal adaptor" is the part that attaches to the electrical junction box via the outwardly sprung members. As such, "circular" appears to mean "round," so that the spring metal adaptor can fit into a round hole in the electrical junction box. Whether the spring metal adaptor needs to be of a constant diameter along its axial length is not addressed in the claims.
Also, in the fifth paragraph of claim 1, the circular spring metal adaptor is said to be less than a complete "circle." This lends further support to the interpretation that "circular" simply means its ordinary definition of "in the form of a circle." The term "circle" refers to the curve of the spring metal adaptor. This term does not seem to be relate at all to the measurements of the diameter along the axial plane of the spring metal adaptor.
b. How "Circular" should be Construed Based on the Specification
The specification supports Arlington's interpretation of "circular" -- i.e., that the spring metal adaptor is shaped in the form of a circle, including in the form of a cone.
Bridgeport points to specification figures which portray the spring metal adaptor as essentially a cylindrical ring with a constant diameter. Bridgeport also points to a specification figure depicting the spring metal adaptor in its flat form, which looks like a piece of metal in the form of a rectangle. Rolling a rectangle creates a cylinder, Bridgeport asserts.
Bridgeport's argument is misplaced. Its argument essentially limits the scope of claim 8 to the embodiments disclosed in the specification. This is something the Phillips court stated should not be done. 415 F.3d at 1323 (stating that the claims should not be confined by the embodiments disclosed in the specification). "The specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication." Vitronics, 90 F.3d at 1582. However, the specific embodiments of an invention described in the specification do not limit the scope of the language used in the claims, unless the specification makes it clear that it is coextensive with the claims. (JVW Enterprises, Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005). Thus, Bridgeport's argument that "[t]he specification of the '050 Patent repeatedly, consistently, and exclusively depicts and describes the 'circular' adaptor as a cylindrical ring" will be rejected as too narrow a construction.
c. How "Circular" should be Construed based on the Prosecution History
Turning to the prosecution history, Bridgeport points to the response by the patentee following the United States Patent and Trademark Office's rejection of the application for the parent patent to the '050 Patent, U.S. Patent No. 5,171,164 ("the '164 Patent"). Arlington responded as follows:
Both claims 1 and 13 have been amended in a manner to distinguish them from Recker. Recker discloses a connector for attaching electrical cables to outlet boxes that utilizes a tubular shell member 16 . . . . The shell member 16 is a tube that forms a complete undivided circle so there can be no springing apart of the periphery of the tube as provided for in Applicants' broad claims 1 and 13. The versatility of Applicants' circular spring metal adaptor permits it to be used with a variety of connectors.
(See Pl.'s Br. In Opp. at 14, Doc. 65 at 20; Def.'s Br. at 13, Doc. 53 at 22 (emphasis added)).
Bridgeport contends that, because the term "circular spring metal adaptor" is common to both the '164 Patent and the '050 Patent, it is proper to construe this term in light of these statements in the '164 Patent file history. Arlington's statement that the shell member 16 is "tubular" and that "there can be no springing apart of the periphery of the tube as provided for in Applicants' broad claims 1 and 13" imply that the circular spring metal adaptor is a tube.
Arlington argues that the terms "tube" and "tubular" refer to the Recker device, and not the '164 Patent or '050 Patent. Arlington explains that the applicant distinguished the circular spring metal adaptor disclosed in the '164 Patent from the Recker device on the basis that the Recker tube could not spring apart -- i.e., the shell member 16 is a tube that does not allow the tube to spring apart, whereas springing ...