Novatek, Inc. v. the Sollami Company

559 F. App'x 1011
CourtCourt of Appeals for the Federal Circuit
DecidedMarch 26, 2014
Docket2013-1389
StatusUnpublished
Cited by1 cases

This text of 559 F. App'x 1011 (Novatek, Inc. v. the Sollami Company) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Novatek, Inc. v. the Sollami Company, 559 F. App'x 1011 (Fed. Cir. 2014).

Opinions

WALLACH, Circuit Judge.

In this patent case, Sollami Company (“Sollami”) alleged Novatek, Inc. (“Novatek”) infringed U.S. Patent Nos. 7,883,155 (“the '155 patent”) and 6,371,567 (“the '567 patent”). Particularly, in February 2011, Novatek instituted this declaratory judgment action at the U.S. District Court for the District of Utah on issues of invalidity and non-infringement of the '155 patent. On July 13, 2011, Sollami filed suit against Novatek in the Southern District of Illinois for infringement of the '567 patent. This latter suit was transferred to the District of Utah, and the two cases were consolidated in February 2012. After claim construction, the district court found non-infringement in favor of Novatek. This court affirms.

Background

The technology at issue involves equipment and machinery used in road milling, mining, and trenching operations. Specifically, the patents are directed to cutter bits, bit holders, and bit blocks used in the above-mentioned operations. The patents purport to provide a better means for allowing the removal of a bit from a bit holder or a bit block, “especially when the bit becomes worn and in need of replacement.” E.g., '567 patent col. 1 ll. 36-37, 43-44. The figure below is illustrative:

[1013]*1013[[Image here]]

[[Image here]]

'155 patent at [57]. A bit 16 and a spacer 17, together with a bit holder 18, and a bit block 20 comprise the claimed invention. The bit 16 includes a hardened tip 21 which resides in a pocket in the front face 22 of a frustoconical forward portion 28 of the bit 16. Id. col. 2 l. 65-col. 3 l. l. “At the rear of the frustoconical portion (23) is a cylindrical front portion base 24.” Id. col. 3 ll. 1-2. “Aft of the cylindrical base 24, the tip narrows to a cylindrical shank 25, which, [in certain embodiments], includes a C-shaped retainer 26 there around and a cylindrical shank portion base 27 defining the rear end of the bit 16.” Id. col. 3 ll. 7-10.

The '567 patent was issued on April 16, 2002, and the '155 patent was issued on February 8, 2011. The two patents’ specifications are not identical but are nonetheless substantially similar. Claims 1 to 9 of the '567 patent and claims 1 to 4 of the '155 patent are the asserted claims in this case. Claim' 1 of the '155 patent is representative:

1. In an assembly for use in road milling, trenching and mining equipment including a bit, bit holder and a bit block, said bit being mountable in a first bore through said bit holder and said bit holder being mountable in a second bore through said bit block, said bit holder and bit block, in combination, comprising:
a single piece bit holder structure including,
a bit holder front portion and a generally cylindrical bit holder shank portion extending axially rearwardly from said front portion defining an annular sidewall, an elongate slot radially through said sidewall extending axially from a distal end of said shank and terminating between said distal end and said front portion defining a C-shape portion of said shank, an outer surface of said C-shape portion providing interference with said second bore on said bit block sufficient to maintain said bit holder on said bit block during use.

'155 patent col. 7 l. 14-col. 8. 1. 8. Claim 1 of the '567 patent differs slightly, and recites:

1. A bit holder for use in road milling, trenching and mining equipment as part of an assembly including a bit, said bit holder and a bit block, said bit being mountable in a first bore through said bit holder and said bit holder being mountable in a second bore through said bit block, said bit holder comprising:
a bit receiving front portion terminating at an annular flange for engaging a face of said bit block, a shank portion extending axially rearwardly from said [1014]*1014annular flange, said shank portion including a declining taper from adjacent said annular flange to adjacent a distal end thereof, said declining taper providing an interference fit between said bit holder and said bit block,
said shank portion including an axial bore centrally therethrough, and
means on said shank portion for providing increased resilience for an outer surface of said declining taper to increase the usable interference fit between said declining taper and said second bore on said bit block by at least about four times a standard interference fit therebetween as said shank portion is fully mounted on said second bore.

'567 patent col. 8 ll.11-33.

Like Sollami, Novatek manufactures a bit assembly used in road milling, mining, and trenching operations (“accused device”). Its assembly consists of a bit with a polycrystalline diamond (“PCD”) coated tip that is brazed to a carbide bolster, which is then brazed to a steel body. No-vatek provides the following depiction of its accused device:

Appellee s Br. 12; J.A. 332.

The district court issued its claim construction order on December 4, 2012, and Novatek moved for summary judgment of non-infringement thereafter on December 21, 2012. On April 30, 2013, the motion was granted and judgment was entered.1 Sollami timely appealed. This court has jurisdiction under 28 U.S.C. § 1295(a)(1) (2012).

Discussion

Sollami makes the following arguments on appeal: (1) that the district court erred in construing “bit,” “bit holder,” and “shank” as recited in the asserted claims; and (2) that the district court erred in finding that the accused device does not have a “bit” as the district court construed the term. The issues presented therefore pertain to the district court’s claim construction and its grant of Novatek’s motion [1015]*1015for summary judgment of non-infringement.

A. The District Court Correctly Construed “Bit,” “Bit Holder,” and “Shank”

This court reviews a district court’s claim construction de novo. Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., No. 2012-1014, 744 F.3d 1272, 1276-77, 1290-92, 2014 WL 667499, at *1, *16 (Fed.Cir. Feb. 21, 2014) (en banc). To ascertain the scope and meaning of the asserted claims, courts look to the words of the claims themselves, the specification, the prosecution history, and, if necessary, any relevant extrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1315-17 (Fed.Cir.2005) (en banc).

Relevant to this appeal, the district court construed, among other terms, “bit,” “bit holder,” and “shank.” Novatek, Inc. v. Sollami Co., No. 2:11-cv-00180, 2013 WL 1831995, at *3 (D.Utah Apr. 30, 2013). Sollami contends that certain terms interpreted by the district court, including the term “bit,” appear only in the preambles of the asserted claims. Sollami argues “bit” is not a required structural element of the asserted claims because the preambles are not limitations on the claims. The district court concluded that the preambles serve as limitations.

“A claim’s preamble may limit the claim when the claim drafter uses the preamble to define the subject matter of the claim.” August Tech. Corp. v. Camtek, Ltd.,

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559 F. App'x 1011, Counsel Stack Legal Research, https://law.counselstack.com/opinion/novatek-inc-v-the-sollami-company-cafc-2014.