Wirtgen America, Inc. v. Caterpillar, Inc., No. 1:2017cv00770 - Document 167 (D. Del. 2023)
Court Description: MEMORANDUM OPINION. Signed by Judge Joshua D. Wolson on 03/10/2023. (apk)
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Wirtgen America, Inc. v. Caterpillar, Inc. Doc. 167 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE WIRTGEN AMERICA, INC., Case No. 1:17-cv-00770-JDW-MPT Plaintiff, v. CATERPILLAR, INC., Defendant. MEMORANDUM Wirtgen America Inc. sued Caterpillar Inc., alleging that Caterpillar infringed thirteen of Wirtgen’s patents. Caterpillar countersued, alleging that Wirtgen infringed three of its patents. All the patents relate to machines used in road construction and repair. The Parties have presented disputes over the meaning of twelve disputed claim terms stemming from the following seven patents: (1) U.S. Patent No. 7,946,788 (‘788 Patent); (2) U.S. Patent No. 8,511,932 (‘932 Patent); (3) U.S. Patent No. 8,690,474 (‘474 Patent); (4) U.S. Patent No. RE48,268 (‘268 Patent); (5) U.S. Patent No. 7,523,995 (‘995 Patent); (6) U.S. Patent No. 9,975,538 (‘538 Patent); and (7) U.S. Patent No. 9,371,618 (‘618 Patent). I held a hearing January 24-25, 2023, and now resolve the disputed constructions. I. LEGAL STANDARD A. General Principles of Claim Construction “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. AWS Corp., 415 Dockets.Justia.com F.3d 1303, 1312 (Fed. Cir. 2005) (quote omitted). Claim construction is a matter of law. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 325 (2015). “[T]here is no magic formula or catechism” for construing a patent claim, nor is a court “barred from considering any particular sources or required to analyze sources in any specific sequence[.]” Phillips, 415 F.3d at 1324. Instead, a court is free to attach the appropriate weight to appropriate sources “in light of the statutes and policies that inform patent law.” Id. (citation omitted). A court generally gives the words of a claim “their ordinary and customary meaning,” which is the “meaning that the term would have to a person of ordinary skill in the art at the time of the invention, i.e., as of the effective filing date of the patent application.” Id. at 1312-13 (quotations omitted). Usually, a court first considers the claim language; then the remaining intrinsic evidence; and finally, the extrinsic evidence in limited circumstances. See Interactive Gift Exp., Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331-32 (Fed. Cir. 2001). While “the claims themselves provide substantial guidance as to the meaning of particular claim terms[,]” a court also must consider the context of the surrounding words. Phillips, 415 F.3d at 1314. In addition, the patent specification “is always highly relevant to the claim construction analysis and indeed is often the single best guide to the meaning of a disputed term.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1330 (Fed. Cir. 2021) (quotation omitted). But, while a court must construe claims to be consistent with the specification, the court must “avoid the danger of reading limitations from the specification into the claim ….” Phillips, 415 F.3d at 1323. This is a 2 “fine” distinction. Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998). In addition, “even 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 Svcs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (quotation omitted) (cleaned up). A court may refer to extrinsic evidence only if the disputed term’s ordinary and accustomed meaning cannot be discerned from the intrinsic evidence. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996). Although a court may not use extrinsic evidence to vary or contradict the claim language, extrinsic materials “may be helpful to explain scientific principles, the meaning of technical terms, and terms of art that appear in the patent and prosecution history.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995). Extrinsic evidence is used “to 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[.]” Phillips, 415 F.3d at 1318. The Federal Circuit has cautioned against relying upon expert reports and testimony that is generated for the purpose of litigation because of the likelihood of bias. Id.; see also Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 595 (1993) (“Expert evidence can be both powerful and quite misleading because of the difficulty in evaluating it.”) (quotation omitted). 3 Ultimately, “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be . . . the correct construction.” Renishaw PLC v. Marposs Societa’ per Anzioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). B. Construction of Means-Plus-Function Limitations When construing claim terms, a court must consider whether they are “mean-plusfunction” limitations. 35 U.S.C. § 112(f) governs the interpretation of means-plus-function claim terms: 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(f). For patents that predate the America Invents Act, the same standard applies under former 35 U.S.C. § 112, ¶ 6. To determine whether Section 112, ¶ 6 governs a claim, the “essential inquiry” is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). 1 If a claim term does not use the word “means,” there is a rebuttable presumption that means-plus-function claiming under Section 112, ¶6 does not apply. See Williamson, 792 F.3d at 1349. To rebut it, a 1 An en banc Federal Circuit joined the portion of the Williamson decision discussing the applicability of Section 112. See Williamson, 892 F.3d at 1347-49 & n.3. 4 challenger must demonstrate that a claim term either fails to “recite sufficiently definite structure” or recites “function without reciting sufficient structure for performing that function.” Id. at 1349. “The ultimate question is whether the claim language, read in light of the specification, recites sufficiently definite structure to avoid [Section] 112, ¶ 6.” MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1341 (Fed. Cir. 2019) (quote omitted). Courts use a two-step process to construe means-plus-function limitations. First, the court must determine the claimed function. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000). Second, the court must identify the corresponding structure that the specification discloses to perform that function. See id. When the specification discloses “distinct and alternative structures for performing the claimed function,” the proper construction should embrace each one. Creo Prods., Inc. v. Presstek, Inc., 305 F.3d 1337, 1346 (Fed. Cir. 2002). The structure disclosed in the patent specification that corresponds to the claimed function limits the scope of a means-plusfunction claim. See Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1219 (Fed. Cir. 2003). C. Indefiniteness “Indefiniteness is a matter of claim construction, and the same principles that generally govern claim construction are applicable to determining whether allegedly indefinite claim language is subject to construction.” Kyowa Hakka Bio, Co., Ltd v. Ajinomoto Co., No. CV 17-313, 2020 WL 3403207, at *5 (D. Del. June 19, 2020) (internal 5 quotations omitted). “The internal coherence and context assessment of the patent, and whether it conveys claim meaning with reasonable certainty, are questions of law.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015). A party seeking to prove indefiniteness must do so by clear and convincing evidence. See BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017); see also Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224, 1228 (Fed. Cir. 2016). “A patent’s specification must ‘conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.’” Teva, 789 F.3d at 1340 (quoting 35 U.S.C. § 112, ¶ 2.) A patent claim is indefinite if, “viewed in light of the specification and prosecution history, [it fails] to inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). 6 The term “indication and setting devices” recites a definite structure to a person of skill in the art (“POSITA”). Courts presume that claim terms without the word “means” do not invoke Section 112, ¶ 6. See Samsung Electronics America, Inc. v. Prisua Engineering Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020). A party urging otherwise can overcome that presumption “only if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Id. at 1353-54 (quotation omitted). Caterpillar has not offered any evidence that “indication and setting devices” fails to recite a definite structure or recites function without structure. Both Parties use a form of indication and setting device as their proposed structure. At most, Caterpillar points to Dr. Rahn’s functional explanation of the devices. But Dr. Rahn’s functional explanation does not prove that he, or any other POSITA, can only understand the claim language in functional terms. To the contrary, Dr. Rahn states that skilled artisans understood “indication and setting devices” to connote a class of structures. (D.I. 121-1 ¶ 60). He supports his assertion by citing Caterpillar’s expert David Bevly, who explained in a prior IPR proceeding that a POSITA would understand a previous patent to disclose a plurality of indication and setting devices. (Id. ¶ 61.) Without any evidence to the contrary, Samsung dictates that Section 112, ¶ 6, does not apply. Because Wirtgen’s proposed construction is consistent with the claim language and the specification, and Caterpillar has not offered a construction other than means-plus-function, I adopt Wirtgen’s construction. 8 Even if “a lack of” were a term of degree, “[c]laim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). “[The Federal Circuit has] explained that a patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement.” Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., 30 F.4th 1339, 1347 (Fed. Cir. 2022). In this case, a POSITA would understand the misalignment accommodated with reasonable certainty. The specification describes the articulated coupling device accommodating “a lack of precise alignment between the output axis of the drive engine 10 and the input axes of the clutch 14 and the drive pulley 11 due to dynamic movement of the drive engine.” ‘268 Patent 6:25-29; see also id. at 5:20-24, 5:42-46. Likewise, the language from the previous patent, of which the ‘268 Patent is a reissue, also explained the misalignment the invention accommodated: The purpose of the articulated coupling is to accommodate the very slight and temporary misalignments between the drive engine and the components of the second group which occur when the drive engine is allowed to slightly vibrate on its flexible mounting relative to the more rigidly mounted components of the second group. (D.I. 119-15 at WA-0012726). The specification and prosecution history, therefore, provide information from which a POSITA would understand the misalignment accommodated with reasonable certainty. Caterpillar offers only attorney argument to the contrary. This 11 This term requires construction because “spring stiffness” does not have a clear, obvious meaning. I adopt Wirtgen’s construction for three reasons. First, it covers the full range of materials offered as preferred embodiments, including those that are not linearly elastic. Second, it reflects that the supports are to be measured relative to each other – read into the claim language, the second support has a higher resistance to deformation than the first. Third, the claim construction exercise is ultimately intended to frame a POSITA’s understanding in a way that is helpful to the eventual jury. This construction should be accessible to future jurors. Caterpillar’s objection to “resistance to deformation” is that it does not reflect the elasticity limitation of the ‘268 Patent. But the disputed term does not require elasticity. Rather, that requirement arises elsewhere in the claim, from the word “elastically.” The first drive engine component must be supported elastically. The second need not. (‘268 Patent, Claim 1(b)-(c).) Because the disputed term does not require elasticity, I will not read this limit into the claim construction. Caterpillar’s proposed construction is inadequate for two reasons. First, the patent contemplates different forms of coupling that are not fully encapsulated by “spring constant,” such as elastomeric or rubber couplings. Second, a mathematical term used by physicists is unlikely to elucidate “spring stiffness” for the average juror. 13 ‘995 Patent 4:38-44, indicates that the hypothetical Wirtgen proposes to illustrate its distinction, which involves a third position, is not at issue in the Patent. To the extent a third position exists and renders the claim indefinite, that is not what claim construction is intended to resolve. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996) (the purpose of claim construction is to “determin[e] the meaning and scope of the patent claims asserted to be infringed”). I also reject Wirtgen’s proposed construction because it adds limitations that the claim language doesn’t support. While the claimed “projecting position” and “retracted position” are determined “relative to the machine frame,” it does not follow that the “projecting position” must be outside of the machine fame or that the “retracted position” must be within the machine frame. Nor does the specification require I import Wirtgen’s proposed limitations. The figures are not inconsistent with my construction and the specification’s description of prior art machines does not limit the patented invention. 15 I reject Wirtgen’s construction because neither the claim nor the specification requires the transmission to be stepless or seamless. (See, e.g., ‘538 Patent 1:35-37 (“variable transmissions which allow for variations in the engine speed without affecting rotor speed.”).) Wirtgen does not explain why a two-speed transmission, or any other conventional multi-speed transmission, would not be variable transmissions. Wirtgen instead relies heavily on its expert’s testimony that a POSITA would understand a variable transmission to refer to a transmission that is both stepless and that can change transmission ratios seamlessly. (D.I.s 117 at 34; 118-11 ¶39). But its expert’s assertion that the plain and ordinary meaning of variable transmission is “a stepless transmission that can change transmission ratios seamlessly” is not persuasive. (D.I. 118-11 ¶35.) It runs counter to the common understanding illustrated by the dictionary definition above and appears to be based on other patents that discuss continuous and infinitely variable transmissions, which are more limited than the variable transmissions claimed in the ‘538 Patent. In addition to its expert, Wirtgen points to the specification’s discussion of continuously variable transmissions. This discussion does not require I adopt Wirtgen’s construction, though. The inventors knew of and described continuously variable transmissions in the specification but did not import this limit to the claim language. Continuously variable transmissions are, therefore, a preferred embodiment. And this is 18
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