Kenall Manufacturing Co. v. Genlyte Thomas Group LLC

413 F. Supp. 2d 936
CourtDistrict Court, N.D. Illinois
DecidedFebruary 2, 2006
DocketNo. 05 C 1138
StatusPublished

This text of 413 F. Supp. 2d 936 (Kenall Manufacturing Co. v. Genlyte Thomas Group LLC) is published on Counsel Stack Legal Research, covering District Court, N.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Kenall Manufacturing Co. v. Genlyte Thomas Group LLC, 413 F. Supp. 2d 936 (N.D. Ill. 2006).

Opinion

MEMORANDUM OPINION AND ORDER

CASTILLO, District Judge.

On February 25, 2005, Kenall Manufacturing Company (“Kenall”) filed suit against Genlyte Thomas Group, LLC (“Genlyte”) seeking a declaratory judgment that Kenall’s products do not infringe upon Genlyte’s Patent Number 5,038,254 (“the ’254 Patent.”) (R. 1, Compl.) On March 4, 2005, Genlyte answered the Complaint and counterclaimed that Kenall infringed on the ’254 Patent. (R. 8, Answer & Countercl.) Pursuant to the Court’s order, the parties filed a Joint Statement of Claim Language in Dispute (“Joint Statement”) on June 30, 2005, stating that they dispute construction of certain phrases in claim 1 of the ’254 Patent. (R. 23, Joint Statement.) The Court then ordered briefing by the parties on the proper construction of the disputed terms in accordance with Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995). Kenall filed its Markman statement with the following documents attached: the ’254 Patent; U.S. Patent No. 5,086,375; U.S. Patent No. 5,160,193; and U.S. Patent No. 3,928,757. (R. 26, Kenall Markman, Exs. 1 — 4). Genlyte then filed its Markman statement, attaching the following documents: the ’254 Patent; the ’254 Patent prosecution history;1 excerpts from 1987 [939]*939and 1993 volumes of various lighting handbooks; a “Statement by Thomas M. Lemons, a Person Skilled in the Lighting Arts” (“Lemons Statement”); and excerpts from Webster’s Ninth New Collegiate Dictionary. (R. 27, Genlyte Markman, Exs. AE.)

In Kenall’s reply brief, Kenall attached the following additional exhibits: “Statement of William E. Brackett A Person Skilled In Lighting Arts” (“Brackett Statement”); excerpts from the 1943 edition of the Hospital Lighting Data Book; U.S. Patent Number 2,557,129; and technical information sheets on Genlyte’s MD*4 lighting system. (R. 28, Kenall Reply, Exs. 1-4.) In response, Genlyte filed a surreply attaching a “Sur-Reply Statement of Thomas M. Lemons” and an excerpt from the 1993 edition of the Lighting Handbook. (R. 31, Genlyte Surreply, Exs. F-G.) Genlyte also filed a motion to strike the statement of William Brackett on January 4, 2006. (R. 32, Mot. to Strike.)

THE ’254 PATENT

The ’254 Patent describes an integrated ceiling-mounted medical lighting system which includes three individual dedicated light fixtures. (R. 26, Kenall Markman, Ex. 1 (“ ’254 Patent”), Abstract; and col. 1, 11.62-64.) The lighting system is rectangular, and it is designed to be placed near where the wall and the ceiling connect at the head of a patient’s hospital bed. (’254 Patent, col.l, 11.65-68.) These three light fixtures include a reading light, an examination light, and an ambient light. (’254 Patent, Abstract.) The parties dispute the claim language defining the reading and ambient lights, light fixtures 1 and 2.

ANALYSIS

Before proceeding on the issue of infringement, the Court must determine the meaning of any disputed claim language as a matter of law. Markman, 52 F.3d at 979. The parties dispute the meaning of the two independent claims of the ’254 Patent, claims 1 and 3.2 The remaining claims are dependent.3 (R. 26, Kenall Markman at 1; R. 27, Genlyte Markman at 4.) Claim 1 states, in relevant part:

A medical lighting system comprising: a body; means for ceiling-mounting said body; a first light fixture within said body oriented to direct light downwardly to a selected reading area under said body; a second light fixture within said body oriented to direct light downwardly and outwardly to a vertical wall surface outwardly adjacent from said body whereby light is reflected back to a broad area under said body.

(’254 Patent at col. 3, ll.37-48.) Although not mentioned in their Joint Statement, the briefs make clear that the parties also dispute the identical language in claim 3.4 [940]*940Within claim 1 and 3, the parties specifically dispute the meaning of the phrases: “a first light fixture within said body oriented to direct light downwardly to a selected reading area under said body;” and “a second light fixture within said body oriented to direct light downwardly and outwardly to a vertical wall surface outwardly adjacent from said body whereby light is reflected back to a broad area under said body.” (’254 Patent at col. 3, ll.54-64.) In the Joint Statement, the parties further limited the disputed words to “oriented to direct light” and “outwardly adjacent.” However, the parties’ briefs show that the two phrases as a whole are in dispute, and the Court will thus consider the disputed phrases in their entirety.

I. Legal Standards

The Federal Circuit mandates that district courts begin their claim construction analysis with the words of the claim, as they define the invention. Nystrorn v. TREX Co., Inc., 424 F.3d 1136, 1142 (Fed.Cir.2005). The words of the claim are generally given their “ordinary and customary meaning,” which 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. Id. The Court must then consider the patent specification and the prosecution history, as the person of ordinary skill in the art views the claim term in the light of the entire intrinsic record. Id. “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.” Id. Finally, the Court may look at extrinsic evidence such as dictionaries, treatises, and expert testimony; “[h]owever, undue reliance on extrinsic evidence poses the risk that it will be used to change the meaning of claims in derogation of the indisputable public records consisting of the claims, the specification and the prosecution history, thereby undermining the public notice function of patents.” Id. at 1143. See also Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005).

II. First Light Fixture: “oriented to direct light downwardly to a selected reading area under said body.”5

A. Words of the Claim

In accordance with the standard set out in Phillips and reiterated in Nys-trom, when construing a claim the Court first considers the words of the claim, which “themselves provide substantial guidance as to the meaning of particular claim terms.” Pfizer, Inc. v. Teva Pharm., USA Inc., 429 F.3d 1364, 1373 (Fed.Cir.2005) (quoting Phillips, 415 F.3d at 1314). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.” Phillips, 415 F.3d at 1314. In most cases, however, courts must dig deeper into the meaning of the claim language.

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