Case 2:16-cv-02408-WHO Document 42 Filed 09/18/17 Page 1 of 19
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF CALIFORNIA
`
`GUTTERGLOVE, INC.,
`Plaintiff,
`
`v.
`
`AMERICAN DIE and ROLLFORMING,
`INC., et al.,
`
`Defendants.
`
`
`
`Case No. 2:16-cv-02408-WHO
`
`
`CLAIM CONSTRUCTION ORDER
`
`
`
`
`
`
`
`
`
`
`BACKGROUND
`
`Plaintiff Gutterglove, Inc. asserts 19 claims from two asserted patents: U.S. Patent Nos.
`
`9,021,747 (the ’747 patent) and 8,479,454 (the ’454 patent). Both of the asserted patents relate
`
`generally to the field of rain gutter debris preclusion systems, referred to as gutter guards. ’454
`
`patent at 1:14–16 (Song Decl. ¶ 2, id. Ex. 1, Dkt. No. 28-2); ’747 patent at 1:13–15 (Song Decl.
`
`¶3. id. Ex. 2, Dkt. No. 28-3). Defendants American Die and Rollforming, Inc. (“ADR”) and
`
`Artesian Home Products, Inc. dba Valor Gutter Guard (“Artesian”)(collectively, “defendants”) sell
`
`a product named the Valor Gutter Guard, which is the primary accused product here.
`
`Exemplary claim 1 from the ’454 patent provides,
`
`
`A gutter debris preclusion system comprising:
`
` a
`
` substantially rigid support having an elongate form between a pair
`of lateral ends opposite each other;
`a screen having a fenestrated configuration to allow water to pass
`therethrough while precluding the passage of debris sized larger
`than fenestrations in the screen;
`said screen coupled to said rigid support and positioned overlying
`said support;
`said screen extending along a length of said rigid support between
`said pair of lateral ends, wherein said rigid support is wider than
`said screen in a direction perpendicular to a length of said rigid
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Eastern District of California
`United States District Court
`
`IPR2018-00015
`Petitioners Ex. 1013 p. 1
`
`

`

`Case 2:16-cv-02408-WHO Document 42 Filed 09/18/17 Page 2 of 19
`
`
`
`support between said lateral ends, said screen coupled to said
`rigid support with an upper portion of said rigid support on one
`side of said screen including an extension overlapping on an
`upper edge of said screen;
`said screen in contact with said support at a plurality of locations
`beneath said screen;
`said rigid support includes a floor on a portion of said rigid support
`located beneath said screen, said floor spaced from said screen,
`said floor including plurality of holes therein, said floor
`including ribs extending up from said floor, said ribs in contact
`with said screen;
`said ribs, are elongate in form and being oriented substantially
`parallel with each other and extending between said lateral ends
`of said rigid support; and,
`said screen being bent into a configuration including multiple crests
`alternating with multiple troughs, with said troughs closer to said
`rigid support than said crests and with at least some of said
`troughs in contact with said rigid support, wherein said troughs
`extend substantially perpendicular to said ribs;
`wherein said extension defines an upper portion of a slot, said upper
`edge of the said screen located within said slot and with both
`portions of said crests of said screen and portions of said troughs
`of said screen received within said slot.
`’454 patent at 8:62–9:31.
`
`And claim 1 from the ’747 patent provides,
`A leaf preclusion system for a roof gutter having a gutter lip for
`keeping leaves and other debris out of the roof gutter while
`allowing water to pass thereinto, comprising: a sheet of fine
`mesh material; said sheet of fine mesh material having an upper
`edge adapted to be located above a lower edge and with said
`sheet of fine mesh material overlying the roof gutter; said sheet
`of fine mesh material being corrugated with ridges extending at
`least part of the way from said upper edge to said lower edge and
`wherein said lower edge being adjacent the gutter lip when the
`system is in use, wherein the water is allowed to pass through
`said sheet of fine mesh material into the roof gutter,
`wherein at least one of said ridges extends from at least one of said
`upper edge and said lower edge.
`’747 patent at 7:62–8:8.
`
`The parties identified four most significant terms in the ’454 patent, and three most
`
`significant terms in the ’747 patent. I held a Claim Construction hearing on September 1, 2017.
`
`LEGAL STANDARD
`
`Claim construction is a matter of law. See Markman v. Westview Instruments, Inc., 517
`
`U.S. 370, 372 (1996); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
`
`Terms contained in claims are “generally given their ordinary and customary meaning.” Vitronics,
`
`90 F.3d at 1582. In determining the proper construction of a claim, a court begins with the
`2
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Eastern District of California
`United States District Court
`
`IPR2018-00015
`Petitioners Ex. 1013 p. 2
`
`

`

`Case 2:16-cv-02408-WHO Document 42 Filed 09/18/17 Page 3 of 19
`
`
`
`intrinsic evidence of record, consisting of the claim language, the patent specification, and, if in
`
`evidence, the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005);
`
`see also Vitronics, 90 F.3d at 1582. “A claim term used in multiple claims should be construed
`
`consistently . . . .” Inverness Med. Switzerland GmbH v. Princeton Biomeditech Corp., 309 F.3d
`
`1365, 1371 (Fed. Cir. 2002).
`
`“The appropriate starting point . . . is always with the language of the asserted claim itself.”
`
`Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). “[T]he ordinary
`
`and customary meaning of a claim term is the meaning that the term would have to a person of
`
`ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date
`
`of the patent application.” Phillips, 415 F.3d at 1312. “There are only two exceptions to this
`
`general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when
`
`the patentee disavows the full scope of a claim term either in the specification or during
`
`prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`
`“Importantly, the person of ordinary skill in the art is deemed to read the claim term not
`
`only in the context of the particular claim in which the disputed term appears, but in the context of
`
`the entire patent, including the specification.” Phillips, 415 F.3d at 1313. “Claims speak to those
`
`skilled in the art,” but “[w]hen the meaning of words in a claim is in dispute, the specification and
`
`prosecution history can provide relevant information about the scope and meaning of the claim.”
`
`Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (citations
`
`omitted). “[T]he specification is always highly relevant to the claim construction analysis.
`
`Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Vitronics,
`
`90 F.3d at 1582. “However, claims are not to be interpreted by adding limitations appearing only
`
`in the specification.” Id. “Thus, although the specifications may well indicate that certain
`
`embodiments are preferred, particular embodiments appearing in a specification will not be read
`
`into the claims when the claim language is broader than such embodiments.” Id. Conversely,
`
`“where [ ] the claim language is unambiguous, [the Federal Circuit has] construed the claims to
`
`exclude all disclosed embodiments.” Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1215-
`
`16 (Fed. Cir. 2008). “[T]he description may act as a sort of dictionary, which explains the
`3
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Eastern District of California
`United States District Court
`
`IPR2018-00015
`Petitioners Ex. 1013 p. 3
`
`

`

`Case 2:16-cv-02408-WHO Document 42 Filed 09/18/17 Page 4 of 19
`
`
`
`invention and may define terms used in the claims,” and the “patentee is free to be his own
`
`lexicographer,” but “any special definition given to a word must be clearly defined in the
`
`specification.” Markman, 517 U.S. at 989-90.
`
`On the other hand, it is a fundamental rule that “claims must be construed so as to be
`
`consistent with the specification.” Phillips, 415 F.3d at 1316. “The construction that stays true to
`
`the claim language and most naturally aligns with the patent’s description of the invention will be,
`
`in the end, the correct construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
`
`1243, 1250 (Fed. Cir. 1998).
`
`
`
`Finally, the court may consider the prosecution history of the patent, if in evidence.
`
`Markman, 52 F.3d at 980. The prosecution history may “inform the meaning of the claim
`
`language by demonstrating how the inventor understood the invention and whether the inventor
`
`limited the invention in the course of prosecution, making the claim scope narrower than it would
`
`otherwise be.” Phillips, 415 F.3d at 1317 (citing Vitronics, 90 F.3d at 1582-83); see also Chimie
`
`v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The purpose of consulting the
`
`prosecution history in construing a claim is to exclude any interpretation that was disclaimed
`
`during prosecution.”) (internal quotations omitted).
`
`In most situations, analysis of this intrinsic evidence alone will resolve claim construction
`
`disputes. Vitronics, 90 F.3d at 1583. However, “it is entirely appropriate . . . for a court to consult
`
`trustworthy extrinsic evidence to ensure that the claim construction it is tending to from the patent
`
`file is not inconsistent with clearly expressed, plainly apposite, and widely held understandings in
`
`the pertinent technical field.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309
`
`(Fed. Cir. 1999). Extrinsic evidence “consists of all evidence external to the patent and
`
`prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.”
`
`Markman, 52 F.3d at 980. All extrinsic evidence should be evaluated in light of the intrinsic
`
`evidence, Phillips, 415 F.3d at 1319, and courts should not rely on extrinsic evidence in claim
`
`construction to contradict the meaning of claims discernible from examination of the claims, the
`
`written description, and the prosecution history, Pitney Bowes, 182 F.3d at 1308 (citing Vitronics,
`
`90 F.3d at 1583). While extrinsic evidence may guide the meaning of a claim term, such evidence
`4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Eastern District of California
`United States District Court
`
`IPR2018-00015
`Petitioners Ex. 1013 p. 4
`
`

`

`Case 2:16-cv-02408-WHO Document 42 Filed 09/18/17 Page 5 of 19
`
`
`
`is less reliable than intrinsic evidence. Phillips, 415 F.3d at 1318-19.
`
`DISCUSSION
`
`Gutterglove urges that the “plain and ordinary meaning” applies for five out of seven of the
`
`disputed terms and asks the court not to construe them. See Gutterglove’s Opening Claim
`
`Construction Br. at 6 (“a floor”), 9 (“a floor on a portion of said rigid support”), 14 (“plurality of
`
`holes”), 19 (“being corrugated with ridges”), 23 (“ridges”)(“Op. Br.”)(Dkt. No. 28). But in
`
`reaching the conclusion that no construction is necessary, it ignores the rule that the court must
`
`resolve actual disputes regarding the proper scope of claims, even when terms have “well-
`
`understood definition[s].” See O2 Micro, 521 F.3d at 1360–61. When the parties present such a
`
`dispute, I must determine the scope as a matter of law.
`
`I.
`
`THE ’454 PATENT MOST SIGNIFICANT CLAIM TERMS
`“a floor” (claims 1, 7, 12, 16)
`A.
`GUTTERGLOVE’S
`DEFENDANTS’
`PROPOSED
`PROPOSED
`CONSTRUCTION
`CONSTRUCTION
`Plain and ordinary meaning.
`“a planar supporting surface of
`
`the underlying support
`Alternatively, “a structure that
`spanning between the front
`resides slightly below the
`edge and the tab and between
`screen to provide a space in
`the lateral ends of the rigid
`which water can travel after
`support”
`coming into contact with the
`screen”
`
`COURT’S
`CONSTRUCTION
`
`“a surface of the underlying
`support that resides slightly
`below the screen”
`
`
`To provide context to the claim term, the portion of claim 1 that mentions “a floor”
`
`provides,
`
`said rigid support includes a floor on a portion of said rigid support
`located beneath said screen, said floor spaced from said screen,
`said floor including plurality of holes therein, said floor
`including ribs extending up from said floor, said ribs in contact
`with said screen;
`’454 patent at 9:13–17 (emphasis added to claim term).
`
`Both parties agree that this term is case dispositive. Joint Claim Construction St. at 6 (Dkt.
`
`No. 26). Defendants insist that this term must be construed because a dispute exists as to the
`
`scope of the term. They argue that (1) “the floor is a part of a rigid support structure” and
`
`5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Eastern District of California
`United States District Court
`
`IPR2018-00015
`Petitioners Ex. 1013 p. 5
`
`

`

`Case 2:16-cv-02408-WHO Document 42 Filed 09/18/17 Page 6 of 19
`
`
`
`“therefore the floor itself must be rigid”;1 (2) the floor must be planar; and (3) the floor must
`occupy a defined area. They reject plaintiff’s alternate proposed construction because it “would
`
`expand the meaning of ‘a floor’ to include any ‘structure’ that ‘resides slightly below the screen to
`
`provide a space in which water can travel… .’” Defs.’ Responsive Claim Construction Br. at 13–
`
`14 (“Resp. Br.”)(Dkt. No. 32). They urge that “the intrinsic record shows that a much narrower
`
`structure was intended[,]” mainly that the floor is a “level” “surface” that “provides support,” and
`
`it is limited to a location “between the front edge and the tab and between the lateral ends of the
`
`rigid support.” Id. at 14, 16–17.
`
`Because a dispute exists as to the scope of the term “floor,” I will look to the intrinsic
`
`record to properly construe the term. See Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d
`
`1243, 1250 (Fed. Cir. 1998)(“[W]here there are several common meanings for a claim term, the
`
`patent disclosure serves to point away from the improper meanings and toward the proper
`
`meaning.”).
`
`1.
`
`The floor need not be “planar”
`Specification and Preferred Embodiments
`a.
`Defendants insist that the specification “makes numerous references to the floor being
`
`planar” and every preferred embodiment discloses a planar floor. Resp. Br. at 14–15.
`
`The specification refers to figures 1-4 and provides,
`
`
`[t]he floor 50 resides slightly below the mesh 20 to provide a space
`in which water can travel after coming into contact with the mesh
`20, and typically passing through the mesh 20 but still adhering for
`some time to an underside of the mesh 20. This floor 50 includes
`transitions 52 at upper and lower edges thereof which are preferably
`diagonal and position the floor 50 beneath the slots 32, 34 and
`beneath a plane in which the tab 40 and front edge 60 reside.
`’454 patent at 7:36–43.
`
`Defendants point to two places in the specification that use the word “planar.” Resp. Br. at
`
`
`1 In its Reply, Gutterglove notes that defendants argue that the floor must be “rigid[,]” but their
`proposed construction does not include that limitation. See Resp. Br. at 14 (“[The claims] state
`that the floor is part of a ‘rigid support’ and therefore the floor itself must be rigid… .”). Since
`their proposed construction does not import a “rigid” limitation, I will not address that apparent
`dispute.
`
`6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Eastern District of California
`United States District Court
`
`IPR2018-00015
`Petitioners Ex. 1013 p. 6
`
`

`

`Case 2:16-cv-02408-WHO Document 42 Filed 09/18/17 Page 7 of 19
`
`
`
`15 (citing ’454 patent at 2:1–6; id. at 7:30–33). The first refers to “ribs extending up from the
`
`floor … to a line parallel with planes of the lip and tab to support the mesh in a generally planar
`
`configuration parallel with the tap and lip.” ’454 patent at 2:1–6. The second notes that “[t]he tab
`
`40 is substantially planar and aligned in a common plane with the extension on the upper surface
`
`of the upper slot 32” and “the entire support 30 has a generally planar form… . The floor 50 is
`
`provided in a lower plane parallel with the plane in which the tab 40 and front edge 60 are
`
`located.” ’454 patent at 7:26–33.
`
`Gutterglove argues that defendants’ citations to “planar” in the specification amount to an
`
`“inaccurate[] and improper[]” attempt to “equate the claim term ‘a floor’ with the ‘rigid support’
`
`element of the claims… .” Reply at 9. It cannot seriously dispute that the specification generally
`
`describes a floor that is parallel to a planar tab, and that the entire support has a generally planar
`
`form. Every embodiment depicts the floor as planar. None of those things, however, change the
`
`fact that the claim language does not require the floor to be planar. “Absent a clear disavowal in
`
`the specification or the prosecution history, the patentee is entitled to the full scope of its claim
`
`language.” Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004).
`
`Defendants cannot point to a location in the specification where Gutterglove specifically disavows
`
`non-planar floors.
`
`It is “not enough that the only embodiments, or all of the embodiments, contain a particular
`
`limitation.” Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). It
`
`is a well-established principle that courts “do not read limitations from the specification into
`
`claims[.]” Id.; see also Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 867 (Fed. Cir.
`
`1985)(“Generally, particular limitations or embodiments appearing in the specification will not be
`
`read into the claims.”). Defendants’ citation to Modine Manufacturing Co. v. United States
`
`International Trade Commission does not alter this conclusion because this is not an instance
`
`where accepting or rejecting a proposed limitation amounts to “a claim interpretation that would
`
`exclude the inventor’s device[.]” 75 F.3d 1545, 1550 (Fed. Cir. 1996); see Resp. Br. at 14–15.
`
`Prosecution History
`b.
`Defendants proffer two additional arguments that may be relevant for validity, but do not
`7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Eastern District of California
`United States District Court
`
`IPR2018-00015
`Petitioners Ex. 1013 p. 7
`
`

`

`Case 2:16-cv-02408-WHO Document 42 Filed 09/18/17 Page 8 of 19
`
`
`
`warrant a different conclusion on claim construction. First, they argue that “[t]he ’454 patent did
`
`not advance floor structures on gutter guards beyond that already seen in the prior art and
`
`therefore, the construction of ‘a floor’ should consummately be limited in scope.” Resp. Br. at 15.
`
`Second, they cite to the prosecution history, specifically a terminal disclaimer filed by Lenney,
`
`purportedly in response to the PTO’s determination that the claim scope of the ’454 patent was not
`
`“patentably distinct” from the ’912 patent, claim 1, which required the floor to be planar. See
`
`Terminal Disclaimer (Costello Decl. ¶ 10, Ex. 7, Prosecution History at GG000101-GG000103,
`
`Dkt. No. 32-8 at 5); Remarks from PTO (Costello Decl. ¶ 10, Ex. 7, Prosecution History at
`
`GG000135, Dkt. No. 32-8 at 11); ’912 patent, claim 1 at 8:7 (“wherein said floor is
`
`planar”)(Costello Decl. ¶13, Ex. 10, Dkt. No. 32-11 at 9).
`
`The PTO memo states, “Although the conflicting claims are not identical, they are not
`
`patentably distinct from each other because the scope of claims 1-20 [of the ’454 patent] are
`
`encompassed by the scope of claim 1 of patent 7310912.” Remarks from PTO ¶ 6. Because the
`
`’912 patent claimed a “planar” floor, the only way for the claims of the ’454 patent to be
`
`“encompassed by” the ’912 patent is if the floor of the ’454 patent is planar as well. But this is a
`
`provisional finding by the PTO, not a specific disclaimer by the patentee. “[T]he prosecution
`
`history can often inform the meaning of the claim language by demonstrating how the inventor
`
`understood the invention and whether the inventor limited the invention in the course of
`
`prosecution, making the claim scope narrower than it would otherwise be.” Phillips, 415 F.3d at
`
`1317. Defendants cannot point to a specific point during prosecution when Lenney disclosed his
`
`understanding of the ’454 patent to encompass only planar floors. See Chimie, 402 F.3d at 1384
`
`(“The purpose of consulting the prosecution history in construing a claim is to exclude any
`
`interpretation that was disclaimed during prosecution.”)(internal quotation marks omitted).
`
`“[B]ecause the prosecution history represents an ongoing negotiation between the PTO and
`
`the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
`
`specification and thus is less useful for claim construction purposes.” Phillips, 415 F.3d at 1317.
`
`Defendants’ arguments may be relevant to a determination of the ’454 patent’s validity, but they
`
`do not justify importing the “planar” limitation during claim construction.
`8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Eastern District of California
`United States District Court
`
`IPR2018-00015
`Petitioners Ex. 1013 p. 8
`
`

`

`Case 2:16-cv-02408-WHO Document 42 Filed 09/18/17 Page 9 of 19
`
`
`
`
`
`2.
`
`The floor is a portion of the underlying support but need not be
`construed as “spanning” a specified area
`Defendants again point to the Lenney ’912 patent and the specification to argue that the
`
`floor is limited to a defined area. Resp. Br. at 16; see ’454 patent, Abstract (“A floor is located
`
`between the front edge and tab at a position slightly below a plane in which the tab and front edge
`
`are located.”). Gutterglove counters that nothing in the claims mandates that the floor “span” a
`
`defined area, and the terms “front edge” and “tab” should not be read into the independent claims.
`
`See Op. Br. at 8. While the specification certainly supports defendants’ proposed construction,
`
`nothing in the claims requires the floor to span the area identified in the Abstract, so I will not
`
`import that limitation into the claim term “a floor.”
`
`COURT’S
`CONSTRUCTION
`
`“a floor on a portion of said rigid support” (claim 1)
`B.
`GUTTERGLOVE’S
`DEFENDANTS’
`PROPOSED
`PROPOSED
`CONSTRUCTION
`CONSTRUCTION
`Plain and ordinary meaning
`“the floor (defined above) as a
`(i.e., “a lower portion of the
`portion of the rigid support, the
`rigid support”).
`other portions of the rigid
`
`support being a tab portion and
`
`a front edge portion, the floor
`portion, the tab portion, and
`the front edge portion
`combining to comprise the
`rigid support.”
`Gutterglove asserts that “[t]he plain and ordinary meaning of ‘a floor on a portion of said
`
`“a lower portion of the rigid
`support”
`
`
`rigid support’ in the context of the ’454 patent requires that the term be construed as a lower
`
`portion of the rigid support within the meaning of claim 1.” Op. Br. at 10. And it argues that
`
`defendants’ proposed construction seeks to improperly import limitations from the specification
`
`into the claims. In response, defendants note that Gutterglove’s proffered explanation of “plain
`
`and ordinary meaning” is “at least a start[,]” but they urge that the definition must also incorporate
`
`the definition of “floor,” as well as provide the other components that comprise the rigid support.
`
`Resp. Br. at 18.
`
`Defendants misunderstand certain tenets of claim construction. They argue that the scope
`
`9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Eastern District of California
`United States District Court
`
`IPR2018-00015
`Petitioners Ex. 1013 p. 9
`
`

`

`Case 2:16-cv-02408-WHO Document 42 Filed 09/18/17 Page 10 of 19
`
`
`
`of this term should be limited by the prior art, but provide no support for such a mandate. I
`
`already rejected this theory in the discussion of the previous term. And they cite to the rule that a
`
`claim interpretation is “rarely, if ever, correct” if it excludes a preferred embodiment, Vitronics, 90
`
`F.3d at 1583, to argue that their interpretation must be correct because “no embodiment is
`
`excluded by [their] construction.” Resp. Br. at 20. But their conclusion does not follow the
`
`premise. Their interpretation could be incorrect (or inappropriate) even though it does not exclude
`
`any embodiments.
`
`The parties have not convinced me that an actual dispute exists here. But to clarify the
`
`plain and ordinary meaning, I will accept Gutterglove’s proposed construction.
`
` “screen” (claims 1, 2, 12, 13, 16, 17)
`C.
`GUTTERGLOVE’S
`DEFENDANTS’
`PROPOSED
`PROPOSED
`CONSTRUCTION
`CONSTRUCTION
`“Mesh with openings small
`“a mesh filtration screen
`enough to preclude grit and
`formed into corrugations with
`other fine debris from passing
`crests and troughs
`into the gutter, but that allow
`perpendicular to the longest
`water to pass into the gutter”
`dimension of the mesh where
`
`the crests and troughs extend
`from an upper edge of the
`mesh to a lower edge.”
`A portion of exemplary claim 1 provides,
`a screen having a fenestrated configuration to allow water to pass
`therethrough while precluding the passage of debris sized larger
`than fenestrations in the screen;
`
`COURT’S
`CONSTRUCTION
`
` “mesh formed into
`corrugations with crests and
`troughs with openings small
`enough to preclude grit and
`other fine debris from passing
`into the gutter, but that allows
`water to pass into the gutter.”
`
`…
`said screen being bent into a configuration including multiple crests
`alternating with multiple troughs, with said troughs closer to said
`rigid support than said crests and with at least some of said
`troughs in contact with said rigid support, wherein said troughs
`extend substantially perpendicular to said ribs;
`’454 patent at 8:65–68 (emphasis added to claim term); id. at 9:21–26.
`
`Gutterglove identified this term as case dispositive for this patent. Joint Claim
`
`Construction St. at 6. It contends that defendants violate claim construction principles by
`
`“removing claim language and importing limitations from the specification into the claims.” Op.
`
`Br. at 11 (citing Innova/Pure Water, Inc., 381 F.3d 1117). It argues that defendants’ proposal
`
`actually seeks to construe a different claim term (“a configuration including multiple crests
`
`10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Eastern District of California
`United States District Court
`
`IPR2018-00015
`Petitioners Ex. 1013 p. 10
`
`

`

`Case 2:16-cv-02408-WHO Document 42 Filed 09/18/17 Page 11 of 19
`
`
`
`alternating with multiple troughs”), and “the shape of the screen is independent from the function
`
`of the screen itself.” Op. Br. at 12. It insists that this term must be construed to communicate the
`
`function of the screen, but not its shape/configuration. See id. Defendants point to the
`
`specification and the file history to argue that the screen must be limited to one “bent into a
`
`configuration of crests and troughs.” Resp. Br. at 21.
`
`1.
`
`The term should be construed to communicate the size of the screen’s
`openings
`
`Defendants do not touch this argument in their response, so it is unclear if a dispute
`
`actually exists. The specification provides, “[t]he screen 20 is fenestrated with sufficiently fine
`
`openings that debris is substantially entirely precluded from passing through the mesh 20.” ’454
`
`patent at 3:36–39. To avoid a potential dispute down the road, I will include Gutterglove’s
`
`proposed language in construing this term.
`
`The screen is limited to one with crests and troughs
`2.
`Each of the independent claims requires that the screen be “bent into a configuration
`
`including multiple crests alternating with multiple troughs.” ’454 patent at 9:21–22 (claim 1); id.
`
`at 10:9–10 (claim 12); id. at 10:53–54 (claim 16). In addition, defendants again point to the
`
`prosecution history and the fact that “every embodiment of the screen in the ’454 patent is shown
`
`as having crests and troughs[.]” Resp. Br. at 21. I have previously rejected both of those
`
`arguments as dictating the construction of a claim, but in this case, the prosecution history
`
`provides more compelling support. The file notes specifically state, “prior art does not provide
`
`sufficient motivations to modify the screen being bent into a configuration including multiple
`
`crests alternating with multiple troughs… .” Notice of Allowability ¶ 3 (Costello Decl. ¶ 10, Ex.
`
`7, Prosecution History at GG000074-GG000075, Dkt. No. 32-8 at 3). The examiner concluded
`
`that “[t]he prior art shows different screen support designs.” Id. Unlike the previous citations to
`
`the prosecution history, this one provides clear support for defendants’ position.
`
`But I need not even consider the prior art and the prosecution history here because “[i]t 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, 415 F.3d at 1312. The claims clearly define the
`11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Eastern District of California
`United States District Court
`
`IPR2018-00015
`Petitioners Ex. 1013 p. 11
`
`

`

`Case 2:16-cv-02408-WHO Document 42 Filed 09/18/17 Page 12 of 19
`
`
`
`screen as “being bent into a configuration including multiple crests alternating with multiple
`
`troughs[.]” I do not see the reasoning behind Gutterglove’s attempts to distinguish the function of
`
`the screen from the configuration of the screen, when both are clearly dictated by the claim
`
`language. To conclude that the configuration was somehow not dictated by the claim language
`
`would be error. See Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir.
`
`1999)(“The district court's attempt to use the written description to circumvent the plain language
`
`of the claim and the clear definition of the disputed claim language found therein was
`
`inappropriate.”).
`
`But because the independent claims do not require all of the crests and troughs to be
`
`“perpendicular to the longest dimension of the mesh” or “extend from an upper edge of the mesh
`to a lower edge,”2 I will not import those limitations from the specification. See Retractable
`Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011)(“There is a fine
`
`line between construing the claims in light of the specification and improperly importing a
`
`limitation from the specification into the claims.”).
`
`
`
`“plurality of holes” (claims 1, 12, 16)
`D.
`GUTTERGLOVE’S
`DEFENDANTS’
`PROPOSED
`PROPOSED
`CONSTRUCTION
`CONSTRUCTION
`Plain and ordinary meaning
`“more than two openings
`
`penetrating the floor which
`In its brief, “plurality is more
`allow water to be conducted
`than one.”
`through the floor.”
`Claim 1 provides in part,
`said rigid support includes a floor on a portion of said rigid support
`located beneath said screen, said floor spaced from said screen,
`said floor including plurality of holes therein, said floor
`including ribs extending up from said floor, said ribs in contact
`with said screen;
`’454 patent at 9:13–17.
`
`COURT’S
`CONSTRUCTION
`
`“two or more openings
`penetrating the floor which
`allow water to be conducted
`through the floor.”
`
`Gutterglove insists that the ordinary meaning of “plurality” is “more than one,” which is
`
`
`2 See ’454 patent, claim 1 at 9:25 – 26 (“wherein said troughs extend substantially perpendicular
`to said ribs”)(emphasis added); claim 12 at 10:3–29 (no m