UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE
East Coast Sheet Metal Fabricating Corp., d/b/a EastCoast CAD/CAM
v. Civil No. 12-CV-517-LM Opinion No. 2014 DNH 055 Autodesk, Inc.
O R D E R
East Coast Sheet Metal Fabricating Corp. ("EastCoast") has
sued Autodesk, Inc. ("Autodesk") in six counts. EastCoast's
claims include one for patent infringement. Autodesk, in turn,
has asserted several affirmative defenses to EastCoast's
infringement claim and has also asserted several patent-related
counterclaims. The parties disagree about the construction of
three terms used in the patents-in-suit. They have briefed
their positions, and on March 11, 2014, the court conducted a
claim-construction hearing in accordance with Markman v.
Westview Instruments, Inc., 517 U.S. 370, 388 (1996). In this
order, the court construes the three disputed claim terms.
Background
EastCoast claims that Autodesk has infringed all five
claims of U.S. Patent No. 7,499,839 B2, the sole claim in U.S.
Patent No. 7,917,340 B2, and all eleven claims of U.S. Patent No. 8,335,667 B 2 . Each of the patents-in-suit claims a method
and apparatus for importing data into program code, and as a
general matter, the invention involves using computer programs
to transform a visual representation of something such as a
ventilation system into manufacturing blueprints. Every
independent claim in each of the three patents-in-suit includes
the three terms that are construed in this order: (1)
"components of the [imported] geometrical information"; (2) "as
a function of"; and (3) "fabrication information."
The Legal Standard
The construction of terms used in patent claims is a
question of law for the court. See Markman, 517 U.S. at 390.
"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." Aventis Pharms. Inc. v. Amino Chems.
Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013) (quoting Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)). A court
construing a patent claim must bear in mind that "[t]here is a
heavy presumption that claim terms are to be given their
ordinary and customary meaning." Aventis, 715 F.3d at 1373
(citing Phi11ips, 415 F.3d at 1312-13; Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ) .
2 Therefore, "[c]ourts are required . . . to 'look to the words of
the claims themselves ... to define the scope of the patented
invention.'" Aventis (quoting Vitronics, 90 F.3d at 1582;
citing Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295,
1299 (Fed. Cir. 1999)).
In a recent opinion, Judge Laplante elaborated upon the
principles a court is obligated to apply when looking to the
words of a patent claim to determine the scope of the invention:
To ascertain th[e] meaning [of a patent claim], the court must first examine the intrinsic evidence, which includes the claim[] [itself], the specifications, and any prosecution history submitted by the litigants. E.g., Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 1164 (Fed. Cir. 2004) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The court starts with the actual language of the claim. E.g., Int'l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1370 (Fed. Cir. 2004); 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1370 (Fed. Cir. 2003). "If the claim language is clear on its face, then [the] consideration of the rest of the intrinsic evidence is restricted to determining if a deviation from the clear language of the claims is specified." Interactive Gift Express, Inc. v. CompuServe Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001); see also Int'1 Rectifier, 361 F.3d at 1370; Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306- 1307 (Fed. Cir. 2003).
Adthough the court must . . . construe the claims in light of the specifications, it must take care not to read limitations from the specifications into the claims. Innova/Pure Water [Inc., v. Safari Water Filtration Sys.,] 381 F.3d [1111,] 117 [(Fed. Cir 2004)]; Liebei-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004). "If the meaning of the
3 claim limitations is apparent from the totality of the intrinsic evidence, then the claim has been construed." Interactive Gift, 256 F,3d at 1332. If, and only if, a "genuine ambiguity" still persists, the court may turn to extrinsic evidence, such as expert testimony, to interpret the claim. Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1367 (Fed. Cir. 2003) (citing Vitronics, 90 F.3d at 1582); see also, e.g., Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1307 (Fed. Cir. 2003).
Best M g m t . Prods., Inc. v. N.E. Fiberglass, L.L.C., Civ. No. 07-
151-JL, 2008 WL 2037349, at *1-2 (D.N.H. May 12, 2008).
Discussion
As noted, the parties have asked the court to construe
three terms. As an example of the manner in which those terms
are used in the patents-in-suit, the court points to the '839
patent, which claims, among other things:
1. A computer-readable medium having computer executable instructions for designing a ventilation system that when executed by a processor performs the following steps comprising
obtaining a visual representation of one or more components of the ventilation system,
assigning one or more property values to each of the components of said ventilation system using a first program code,
exporting geometrical information representing said visual representation and said property values of each component to a data file using the first program code,
4 importing said data file into a second software application, and
using the second software application for
mapping all components of the imported geometrical information to a plurality of standard fittings as a function of (1) standards information including (1A) information specific to each of the plurality of standard fittings and (IB) fabrication information of each of the plurality of specific standard fittings, (2) the imported geometrical information, and (3) the assigned property values, and
generating a manufacturing blueprint comprising
the standard fittings,
the fabrication information, and
a three-dimensional representation of the visual representation,
whereby each of the one or more components of the visual representation have been mapped to standard fittings and include fabrication information in the manufacturing blueprint, thus, eliminating a need to redraw every component of an architectural drawing before coordination, fabrication, and installation of the system[.]
Compl., Ex. 14 (doc. no. 1-17), at 9 (emphasis added).1 Having
described the manner in which the disputed claim terms are used
in the patents-in-suit, the court turns its attention to each of
those three terms.
1 U.S. Patent No. 7,499,839 B2 col.7 11.10-43 (filed Sept. 29, 2005) .
5 A. "components of the [imported] geometrical information"
EastCoast argues that this term need not be construed
because its meaning is readily evident. In the alternative, it
argues that "components of the [imported] geometrical
information" means " 'pieces' or 'elements' of the geometrical
information." Autodesk contends that the term is too ambiguous
to be construed and, as a result, is fatally indefinite. In
response, EastCoast argues that it is premature to consider the
issue of indefiniteness, which should be resolved at summary
judgment rather than in the context of claim construction.
Based upon the reasoning of 02 Micro International Ltd. v.
Beyond Innovation Technology Co., 521 F.3d 1351, 1360 (Fed. Cir.
2008), and Phillips, 415 F.3d at 1312-13, the court is
sympathetic to EastCoast's argument that the term "components of
the [imported] geometrical information" requires no
construction. Indeed, this seems to be a case in which "the
ordinary meaning of [the] claim language . . . [is] readily
apparent even to lay judges." 02 Micro, 521 F.3d at 1360
(citation omitted). That said, the court will, out of an
abundance of caution, construe the disputed claim term. That
task is complicated by the fact that while EastCoast proposes a
construction, Autodesk does not, contending that the term is
6 nonsensical and, therefore, "insolubly ambiguous." The court
cannot agree.
Claim 1 of the ' 839 patent speaks of "mapping all
components of the imported geometrical information to a
plurality of standard fittings . . . Compl., Ex. 14 (doc.
no. 1-17), at 9 m The specification teaches that "[t]he
geometrical information that exists for each component of the
design may include centerline coordinates, inlet coordinates,
outlet coordinates, and orientation of the fitting." I d . at 8.3
Thus, "centerline coordinates" are a piece or an element of the
geometrical information. Inlet coordinates are a piece or an
element of the geometrical information. And so on. Given that
at least four different items fall within the category of
"geometrical information," each individual item is a piece or an
element of the geometrical information. Thus, the court
construes "components of the [imported] geometrical information"
to mean "'pieces' or 'elements' of the geometrical information."
Autodesk's attempts to identify ambiguity in the disputed
claim term are unavailing. In its opening Markman brief,
Autodesk argues that EastCoast's proposed construction "is not
at all supported, and . . . makes no sense in the context of the
- '839 Patent col.7 11.25-26.
3 '839 Patent col.5 11.60-62.
7 claims." Def.'s Opening Br. (doc. no. 63) 8. In so arguing.
Autodesk rejects EastCoast's reliance upon language in the
specification referring to "[t]he geometrical information that
exists for each component of the design," noting that the
specification refers to components of the design, not components
of the geometrical information. Indeed, the specification does
refer to components of the design, but it also says that
geometrical information may consist of at least four different
kinds of information and, as the court has already indicated,
each kind of information is a piece or an element or a component
of the larger category "geometrical information." In short,
EastCoast's proposed construction is supported by the
specification.
In its rebuttal brief, Autodesk makes the following
argument:
The proposed meaning eventually offered by East Coast merely exacerbates the indefiniteness. Specifically, East Coast's proposed construction simply replaces the word "components" with "pieces or elements." East Coast Br. at 2. In asserted support for this word swap, East Coast relies on claim 9 of the '667 patent to conclude that geometrical information is "information about the geometry of the components." I d . at 3. Incorporating that word swap into the disputed claim term would transform it into "components of the information about the geometry of the components" — which is utterly confusing and confirmatory that the disputed claim term is indeed insolubly ambiguous and thus indefinite. Def.'s Rebuttal Br. (doc. no. 64) 1-2. There is nothing at all
confusing about a reference to components of geometrical
information co-existing in the same phrase with a reference to
components of a design. A design can have multiple parts, just
as the geometry of any one of those multiple parts can have - or
must have - multiple parts.
Finally, Autodesk raised a third argument at the Markman
hearing. That argument rests upon two principles: (1) "the
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," Phillips, 415
F,3d at 1313 (citations omitted); and (2) "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," i d . In reliance upon those
principles, Autodesk argues that EastCoast's proposed
construction fails because: (1) the disputed claim term appears
in the context of a step calling for "mapping all components of
the imported geometrical information to a plurality of standard
fittings," Compl., Ex. 14 (doc. no. 1-17), at 9;4 and (2) that
4 '839 Patent col.7 11.25-26.
9 step is unsupported by the specification, which does not mention
mapping geometrical information to standard fittings, but speaks
only of mapping non-standard fittings to standard fittings.
Autodesk's argument is not persuasive. First off, it is
not at all clear that the mapping aspect of the mapping step is
unsupported by the specification. While the specification does
not use the phrase "mapping all components of the imported
geometrical information to a plurality of standard fittings,"
Compl., Ex. 14 (doc. no. 1-17), at 9,5 it does refer to "[t]he
stored standards information [being] used to assign standard
fittings to the geometrical information," i d . at 8.6
Conceptually, it is difficult to see how the latter does not
support the former. But whether or not the mapping step is
supported by the specification is a question for another day.
The larger problem with Autodesk's argument is that by
focusing on support for the mapping aspect of the mapping step,
Autodesk has moved from construing the disputed claim term,
"components of the [imported] geometrical information," to
making a full-fledged indefiniteness argument, and one that is
based upon something more than the claim term at issue. The
court appreciates that "[i ]ndefiniteness is a matter of claim
5 '839 Patent col.7 11.25-26.
6 '839 Patent col.6 11.14-16.
10 construction." Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319
(Fed. Cir. 2008). But, at the same time, the mere fact that
claim construction is a necessary prerequisite to determining
whether a claim is indefinite does not, by itself, compel a
court undertaking claim construction, under Markman, to address
the question of invalidity due to indefiniteness. Cf.
Koninklijke Philips Elecs. N.V. v. Zoli Med. Corp., 914 F. Supp.
2d 89, 100-01 (D. Mass. 2012) (declining to construe disputed
claim term and deferring question of indefiniteness to surmaary
judgment). Here, given that Autodesk's indefiniteness argument
involves more than the claim term that the court has construed
in this order, the better course is to defer the question of
indefiniteness raised in Autodesk's third argument to the
surmaary-judgment stage.
So, to restate, the court construes the term "components of
the geometrical information" to mean "'pieces' or 'elements' of
the [imported] geometrical information," and the court defers
ruling on Autodesk's indefiniteness argument until summary
judgment.
B. "as a function of"
EastCoast argues that "as a function of" means "using"
while Autodesk contends that the term means "using executable
instructions influenced by." In a nutshell, EastCoast's
11 position is that Autodesk's construction results in a disfavored
redundancy, while Autodesk contends that EastCoast's
construction, while perhaps correct in the abstract, fails to
account for the context in which the term is used. EastCoast has
the stronger argument.
The preamble to each independent claim speaks of an
invention consisting of a "computer-readable medium" that
performs a series of steps when a processor executes its, i.e.,
the medium's, computer executable instructions. Compl., Ex. 14
(doc. no. 1-17), at 9.7 One of those steps is "mapping all
plurality of standard fittings as a function of" various
categories of information. I d . (emphasis added).° Under
EastCoast's construction, the computer-readable medium performs
its mapping step by using a processor to execute instructions
that, when executed, use, or act upon, various categories of
information. That construction is supported by the
specification. See i d . at 5.9 Autodesk's construction, on the
7 '839 Patent col.7 11.10-13.
8 '839 Patent col.7 11.25-32.
9 '839 Patent fig.4 (characterizing the final step in the patented method this way: "Utilize standards information, geometrical information, and property values to generate a final design.").
12 other hand, appears to conflate the computer executable
instructions with the mapping that results from their execution.
Plainly, the mapping is influenced by the information used to
generate it. But Autodesk has identified no intrinsic evidence
to support the proposition on which its construction is based,
i.e., that the instructions themselves, as opposed to the
mapping they generate, are influenced by the information on
which they act. Accordingly, the court construes the term "as a
function of" to mean "using."
C. "fabrication information"
EastCoast argues that "fabrication information" means
"information that is useful or necessary to fabricate a
component or a system," while Autodesk contends that the term
means "any information for construction." EastCoast points to
several pieces of intrinsic evidence to support its construction
while Autodesk challenges the quality of that evidence and
asserts that EastCoast's construction both impermissibly narrows
the claim and introduces an unmanageable subjective element to
it. Again, EastCoast has the better argument.
The court begins by noting that the term "fabrication
information" seems to fall fairly close to the line that
separates terms that require construction from those that do
not. And, while it would not take much to convince the court
13 that the disputed term does not require construction, neither
party makes that argument, so the court will construe the term
"fabrication information."
The two sides take slightly different approaches to the
task at hand. For its part, EastCoast elaborates upon the claim
term qualitatively, by indicating just what kind of information
fabrication information is. Autodesk does the same thing, but
more parsimoniously, letting the words "for construction" do the
work that is done in EastCoast's interpretation by the words
"useful or necessary to fabricate a component or a system."
Autodesk also introduces a seemingly quantitative element by
using the word "any," presumably to capture information for
construction that is neither necessary nor useful. Therein lies
the problem with Autodesk's approach.
Semantically, it is difficult to see how information that
is neither necessary nor useful for construction (or
fabrication) could qualify as fabrication information in the
first place. In any event, such information could hardly
qualify as information "for construction." Thus, there is no
logical basis for Autodesk's attempt to expand the term
"fabrication information" to include information that is neither
useful to nor necessary for construction or fabrication.
Moreover, while Autodesk argues that the words "useful" and
14 "necessary" incorporate an untenable subjective element into the
term "fabrication information," the same may be said of the word
"for" in Autodesk's preferred construction. Indeed, as a
sematic matter, is would seem indisputable that information is
"for construction" only if a person seeking to construct
something would find that information useful or necessary.
Information that is not useful or necessary is, necessarily, not
information for construction.
Finally, EastCoast's construction of the disputed term is
supported by the specification. The specification indicates
that "the present invention can be used to provide information
necessary for the fabrication of a fluid control system . . . ."
Compl., Ex. 14 (doc. no. 1-17), at 6.10 According to Autodesk,
EastCoast's reliance upon that sentence is misplaced because it
neither mentions information that is merely useful, nor limits
the invention to providing information that is necessary or
useful. On the other hand, however, there is nothing anywhere
in the specification to suggest that the invention can be used
to provide information that is neither useful nor necessary to
fabricate a component or a system.
10 ' 839 Patent col.2 11.45-47.
15 Accordingly, the court construes the term "fabrication
information" to mean "information that is useful or necessary to
fabricate a component or a system."
Conclusion
For the reasons detailed above, the term "components of the
[imported] geometrical information" is construed to mean
"'pieces' or 'elements' of the geometrical information," the
term "as a function of" is construed to mean "using," and the
term "fabrication information" is construed to mean "information
that is useful or necessary to fabricate a component or a
system."
SO ORDERED.
Landya”Mc(gaf/ferty United Stages District Judge
March 18, 2 014 cc: Thomas Tracy Aquilla, Esq. Kenneth C. Bartholomew, Esq. Robert F. Callahan, Jr., Esq. Joel M. Freed, Esq. Kyle L. Harvey, Esq. Damian R. Laplaca, Esq. Michael S. Lewis, Esq. Richard C. Nelson, Esq. Alexander P. Ott, Esq. Steven R. Pedersen, Esq. Donald J. Perreault, Esq. Rolf O. Stadheim, Esq. George C. Summerfield, Esq.