Pelican International Inc. v. Hobie Cat Company

• Court: District Court, S.D. California
• Decided: February 1, 2022
• Docket: 3:20-cv-02390
• Status: Unknown

Opinion

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 PELICAN INTERNATIONAL INC., Case No. 20-cv-2390-BAS-MSB

12 Plaintiff, CLAIM CONSTRUCTION ORDER 13 v. FOR UNITED STATES PATENT NUMBER 10,829,189 14 HOBIE CAT COMPANY, et al.,

15 Defendants. 16 17 Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), this Court 18 conducted a Markman hearing (“Hearing”) on November 9, 2021 in the above-captioned 19 patent-infringement case in order to construct ten disputed claim terms and phrases for 20 United States Patent Number 10,829,189 (“‘189 Patent”), filed February 27, 2019. (See 21 Markman Hr’g Tr. (“Tr.”), ECF No. 62.) Prior to the Hearing, the parties submitted their 22 joint claim construction chart (see Chart, ECF No. 39-1) and briefing (see ECF Nos. 40- 23 41, 43, 47) in accordance with this District’s local rules and this Court’s scheduling order. 24 For the reasons set forth on the record at the Hearing, and discussed below, the Court enters 25 the following claim constructions. 26 27 28 1 BACKGROUND 2 Plaintiff Pelican International Inc. (“Pelican”) brought this patent infringement 3 |}action against Defendants Hobie Cat Company and Hobie Cat Company II, LLC 4 || (collectively, “Hobie Cat”), alleging infringement of the ‘189 Patent. As shown in Figure 5 ||1 and Figure 11 below, the ‘189 Patent relates to an interface for mounting a pedal- 6 || propulsion system on to a thermoformed kayak for hands-free propulsion of the watercraft. 7 || (See ‘189 Patent, Ex. A to Lyons Decl., ECF No. 40-2.) 8 ar 9 (By 500 502b Lf 4 a 10 —\ oe [50a 11 □□ . Es & hk . _ 300 10 38 \ ' cd pe 12 \ a Ne ac ESR DA B ot a \ Le “Sih x Ze □□□ 14 \ = Ne «eu a 1 si NN 44 [rs pee sae 15 \ \ 2 & +? oh FE Zz Bo ™ Sf = oN 302 16 50 ty < Sed SOX — 68 542b Le ee at = □ — 64 17 Se | Xe ° 542a ( 638 18 FIG.1 FIG.11 19 20 Pelican claims that the accused device—Hobie’s line of “Mirage Passport Kayaks”— 21 infringed, and continues to infringe, upon one or more claims of the ‘189 Patent. (First 22 || Am. Compl. 4 13, ECF No. 16.) In its Answer, Hobie Cat counter-claimed for declaratory 23 judgments of non-infringement and patent invalidity. (Answer, ECF No. 17.) 24 The disputed claim terms and phrases are summarized herein and in the parties’ 25 Chart, which the Court hereby incorporates by reference (see ECF No. 39-1). 26 ||II. Principles of Claim Construction 27 “A determination of infringement involves a two-step analysis. ‘First, the claim 28 || must be properly construed to determine its scope and meaning. Second, the claim as

1 properly construed must be compared to the accused device or process.’” Omega Eng’g, 2 Inc. v. Raytek Corp., 334 F.3d 1314, 1320 (Fed. Cir. 2003) (quoting Carroll Touch, Inc. v. 3 Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993)); see also Wavetronix LLC 4 v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1354 (Fed. Cir. 2009). The first step of the 5 infringement analysis, often referred to as claim construction, is now before this Court. 6 Claim construction “is exclusively within the province of the court [to decide],” not the 7 jury. Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996); see also Teva 8 Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 326 (2015) (opining judges, not juries, are 9 better suited to interpret the meaning of a disputed claim term). 10 A. Evidence Reviewed During Claim Construction 11 “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the 12 invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 13 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari 14 Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In deciphering the 15 meaning of disputed claim terms, courts “generally” must ascribe to those terms “their 16 ordinary and customary meaning.” Phillips, 415 F.3d at 1312; see also Vitronics Corp. v. 17 Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “[T]he ordinary and customary 18 meaning of a claim term is the meaning that the term would have to a person of ordinary 19 skill in the art in question at the time of the invention, i.e., as of the effective filing date of 20 the patent application.” Phillips, 415 F.3d at 1313. “The inquiry into the meaning that 21 claim terms would have to a person of skill in the art at the time of the invention is an 22 objective one. This being the case, a court looks to those sources available to the public 23 that show what a person of skill in the art would have understood disputed claim language 24 to mean.” Innova/Pure Water, 381 F.3d at 1116. “Those sources include the words of the 25 claims themselves, the remainder of the specification, the prosecution history, and extrinsic 26 evidence concerning relevant scientific principles, the meaning of technical terms, and the 27 state of the art.” Id. (citing Markman, 52 F.3d 967, 979–80 (Fed. Cir. 1995), affirmed 517 28 U.S. at 370). “In construing the patent, a court must consider intrinsic evidence,” i.e., the 1 specification, the claims of the patent, and the prosecution history, and “may consider 2 extrinsic evidence,” e.g., dictionary sources, “when appropriate.” Pulse Eng’g, Inc. v. 3 Mascon, Inc., No. 08CV0595 JM (AJB), 2009 WL 755321, at *1 (S.D. Cal. Mar. 9, 2009) 4 (citing Phillips, 415 F.3d at 1314) (emphasis in original). 5 Courts first look to the words used in the claims themselves, including their context. 6 See Scanner Techs. Corp. v. ICOS Vision Sys. Corp., N.V., 365 F.3d 1299, 1303 (Fed. Cir. 7 2004) (holding that claim construction “begins and ends” with a claim’s actual words). 8 Claims are interpreted subject to the standard canons of claim construction. See, e.g., 9 Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d 1291, 1300 (Fed. Cir. 2014). For 10 example, “the person of ordinary skill is deemed to read the claim term not only in the 11 context of the particular claim in which the disputed term appears, but in the context of the 12 entire patent, including the specification.” Phillips, 415 F.3d at 1314 (citing Multiform 13 Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)); Medrad, Inc. v. 14 MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (“We cannot look at the ordinary 15 meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the 16 context of the written description and the prosecution history.”). Furthermore, because a 17 term that appears in multiple claims should generally be construed consistently, “[o]ther 18 claims of the patent in question, both asserted and unasserted . . ., [can] be valuable sources 19 of enlightenment as to the meaning of the [disputed] claim term.” Phillips, 415 F.3d at 20 1314 (citing Vitronics, 90 F.3d at 1582). On the other hand, courts presume the use of 21 different words or phrases in separate claims “to indicate that the claims have different 22 meanings and scope” under the doctrine of “claim differentiation.” Andersen Corp. v. 23 Fiber Composites, LLC, 474 F.3d 1361, 1369 (Fed. Cir. 2007). 24 25

26 1 The specification refers to “written description” of the invention which enables one skilled in the art to make and use the invention and discloses the best mode of carrying out the invention. See 35 U.S.C. 27 § 112. 2 The claims reside at the end of the specification. They “particularly point[] out and distinctly 28 1 Claims do “not require elaborate interpretation.” Brown v. 3M, 265 F.3d 1349, 1352 2 (Fed. Cir. 2001). In some cases, the ordinary meaning of claim language as understood by 3 a person of skill in the art may be readily apparent even to lay judges, and claim 4 construction in such cases involves little more than the application of the widely accepted 5 meaning of commonly understood words.”3 Phillips, 415 F.3d at 1314 (citing 3M, 265 6 F.3d at 1352). 7 The specification “is always highly relevant to the claim construction analysis. 8 Usually it is dispositive; it is the single best guide to the meaning of a disputed term.” 9 Vitronics, 90 F.3d at 1582; accord Phillips, 415 F.3d at 1317 (“It is entirely appropriate for 10 a court, when conducting claim construction, to rely heavily on the written description for 11 guidance as to the meaning of the claims.”). Importantly, the specification “may reveal a 12 special definition given to a claim term by the patentee that differs from the [plain and 13 ordinary] meaning it would otherwise possess. In such cases, the inventor’s lexicography 14 governs.” Phillips, 415 F.3d at 1316. 15 Another bedrock principal of claim construction is that courts are not to read 16 limitations from the specifications—including the drawings therein, or “Figures”—into the 17 claims. As explained by the Federal Circuit in Phillips, there is a “distinction between 18 using the specification to interpret the meaning of a claim and importing limitations from 19 the specification into the claim.” Id. at 1323. The Federal Circuit has “expressly rejected 20 the contention that if a patent describes only a single embodiment, the claims of the patent 21 must be construed as being limited to that embodiment.” Id. 22 As mentioned above, in consulting intrinsic evidence, courts may look beyond the 23 patent itself and consult the prosecution history, so long as such history is in evidence. See 24 id. at 1317. The patent, together with the prosecution history, “usually provides the 25 technological and temporal context to enable the court to ascertain the meaning of the claim 26

27 3 As Phillips teaches, “general purpose dictionaries” may be instructive in determining whether the ordinary meaning of claim language as understood by a person of skill in the art is readily apparent. 28 1 to one of ordinary skill in the art at the time of the invention.” V-Formation, Inc. v. 2 Benetton Grp. SpA, 401 F.3d 1307, 1310 (Fed. Cir. 2005). 3 “In most situations, an analysis of the intrinsic evidence alone will resolve any 4 ambiguity in a disputed claim term.” Vitronics, 90 F.3d at 1583. However, although it is 5 “less significant than the intrinsic record in determining the legally operative meaning of 6 claim language[,]” a Court may use extrinsic evidence “to shed useful light on the relevant 7 art[.]” Phillips, 415 F.3d at 1317 (instructing extrinsic evidence “can help educate the court 8 regarding the field of the invention and can help the court determine what a person of 9 ordinary skill in the art would understand the claim terms to mean”). Extrinsic evidence 10 includes outside sources, expert testimony, and learned treatises. See Pulse, 2009 WL 11 755321, at *2; see 24/7 Customer, Inc. v. LivePerson, Inc., 235 F. Supp. 3d 1102, 1107 12 (N.D. Cal. 2016) (“Within the class of extrinsic evidence, dictionaries, and especially 13 technical dictionaries, ‘can assist the court in determining the meaning of particular 14 terminology to those of skill in the art’ because they ‘endeavor to collect the accepted 15 meanings of terms used in various fields of science and technology.’” (quoting Phillips, 16 415 F.3d at 1318)). While no doubt useful, “it is improper to rely on extrinsic evidence” 17 where the intrinsic evidence alone is sufficient. Vitronics, 90 F.3d at 1583. Furthermore, 18 under no circumstances may extrinsic evidence be used to “change the meaning of the 19 claims in derogation of the indisputable public records consisting of the claims, the 20 specification and the prosecution history, thereby undermining the public notice function 21 of patents.” Nystrom v. TREX Co., 424 F.3d 1136, 1143 (Fed. Cir. 2005). 22 B. Means-Plus-Function Limitations 23 Hobie Cat seeks construction of several claim terms as means-plus-function 24 limitations pursuant to 35 U.S.C. § 112(f) (“Section 112(f)”), as elaborated below. When 25 a claim term or phrase is governed by Section 112(f), it “shall be construed to cover the 26 corresponding structure, material, or acts described in the specifications and equivalents 27 thereof.” 35 U.S.C. § 112(f). “In enacting this provision, Congress struck a balance in 28 allowing patentees to express a claim limitation by reciting a function to be performed 1 rather than by reciting structure for performing that function, while placing specific 2 constraints on how such limitation is to be construed, namely, by restricting the scope of 3 coverage to only the structure, materials, or acts described in the specification as 4 corresponding to the claim function and equivalents thereof.” Williamson v. Citrix Online, 5 LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015). 6 The first step in determining whether Section 112(f) is applicable to a given 7 limitation is assessing for “the presence or absence of the word ‘means’” in the subject 8 claim term or phrase. Id. at 1348 (citing Personalized Media Comms., LLC v. Int’l Trade 9 Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998)). Where the word “means” is present, a 10 rebuttable presumption arises that Section 112(f) applies. Conversely, when the word 11 “means” is absent, a rebuttable presumption arises that Section 112(f) is inapplicable. Id. 12 The Federal Circuit has made clear that “[m]erely because an element does not include the 13 word ‘means’ does not automatically prevent the element from being construed as a means- 14 plus-function element.” Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996); 15 see also Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996) 16 (“We do not mean to suggest that [Section 112(f)] is triggered only if the claim uses the 17 word ‘means.’”). A challenger may overcome that rebuttable presumption and establish 18 Section 112(f)’s applicability in lieu of the word “means” if it demonstrates “the claim term 19 fails to ‘recite[] sufficiently definite structure’ or else recites function without reciting 20 sufficient structure for performing that function.” Williamson, 792 F.3d at 1349 (quoting 21 Watts v. XL Sys. Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). 22 C. Judicial Correction of Errors in a Patent 23 Pelican seeks judicial correction of several claim terms, as elaborated below. As a 24 general rule, a claim term must be construed “as written, not as the patentees wish they had 25 written it.” Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (2004); Hoganas 26 AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993) (“It would not be appropriate 27 for us now to interpret the claim differently just to cure a drafting error” for doing so would, 28 inter alia, “interfere with the function of claims in putting competitors on notice”). 1 However, “[c]ertain obvious errors in the patent can be corrected by the district court.” 2 Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). 3 Specifically, a district court may issue a judicial correction “of minor unintentional errors 4 . . . only if (1) the correction is not subject to reasonable debate based on consideration of 5 the claim language and specification and (2) the prosecution history does not suggest a 6 different interpretation of the claims.” Id. Where the court cannot discern an error “simply 7 by reading the patent” as an ordinary artisan would, the court lacks authority to issue a 8 correction. See Grp. One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1303 (Fed. Cir. 9 2005). 10 D. Invalidity for Indefiniteness 11 As mentioned above, Hobie Cat asserts in its Answer, and argues in its briefing, that 12 several claims in the ‘189 Patent are indefinite under 35 U.S.C. § 112(b) (“Section 112(b)”) 13 and, thus, invalid.4 “Patent invalidity is an affirmative defense to an action for 14 infringement.” BASF Corp. v. SNF Holding Co., 955 F.3d 958, 963 (Fed. Cir. 2020) 15 (quoting 35 U.S.C.§ 282(b)). “The statutory presumption of patent validity imposes the 16 burden of persuasion on the defendant[.]” Id. (citing 35 U.S.C. § 282(a)). “[A] patent is 17 invalid for indefiniteness if its claims, read in light of the specification delineating the 18 patent, and the prosecution history, fail to inform with reasonable certainty, those skilled 19 in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 20 U.S. 898, 901. 21 III. CONSTRUCTION OF DISPUTED CLAIM TERMS 22 With the above-referenced principles of claim construction in mind, the Court next 23 turns to the ten disputed claim terms and phrases proffered by the parties. (See Chart.) 24 Several of the disputed terms appear across claims; the court’s construction applies to all 25 instances of those terms unless otherwise indicated. See Iverness Med. Switz. GmbH v. 26

27 4 Section 112(b) provides that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor 28 1 Princeton Biomeditech Corp., 309 F.3d 1365, 1371 (Fed. Cir. 2002) (holding claim term 2 appearing in multiple claims generally should be construed consistently). 3 A. Disputed Claim Terms 4 Claims 14 through 20 and claim 25 of the ‘189 Patent introduce the disputed terms 5 and phrases, as shown below (with disputed terms highlighted in bold and terms for which 6 Pelican seeks correction underlined). These claims also are representative of many of the 7 elements of the interface device taught by the ‘189 Patent. 8 14. A watercraft comprising: 9 rigid body having a deck portion, a hull portion and a well extending between the deck portion and the hull portion, 10

11 an interface[5] for mounting a propulsion mechanism to the body of the watercraft, the interface including: 12

13 a first portion including a first plate positionable adjacent to one of the hull portion and the deck portion of the watercraft, about 14 the periphery of the well, and at least one channel extending 15 from the first plate, the channel being positionable in the well, the channel being sized and shaped for receiving therein a 16 portion of the propulsion mechanism and for mounting the 17 propulsion mechanism to the interface; and

18 at least one fastening assembly for removably fastening the 19 first portion to the body of the watercraft.

20 15. The watercraft of claim 14, wherein the interface further comprises a 21 second portion including a second plate positionable adjacent to the other of the hull portion and the deck portion of the watercraft, about 22 the periphery of the well, the second plate comprising a hole sized and 23 shaped for receiving therethrough a portion of the propulsion mechanism, the hole being positionable in registry with well and with 24 the channel of the first portion, and wherein the at least one fastening 25 assembly is further configured for removably fastening the second portion of the interface to the body of the watercraft. 26

27 5 The parties agree the term “interface” means “intermediate connecting two structures together.” 28 1 16. The watercraft of claim 15, wherein the at least one fastening assembly is configured for removably fastening the first portion of the second 2 portion of the interface. 3 17. The watercraft of claim 16, wherein the at least one fastening assembly 4 includes a first segment engaging the first portion of the interface and 5 a second segment engaging the second portion of the interface, the first and second segments of the at least one fastening assembly 6 collaborating to force the first and second portions of the interface 7 toward one another to sandwich the body of the watercraft between the first and second plates. 8

9 18. The watercraft of claim 17, which the first segment of the at least one fastening assembly comprises a threaded fastener engaging the first 10 plate of the first portion and the second segment of the at least one 11 fastening assembly comprises a fastening projection provided with a threaded hole, the threaded fastener being engageable in the threaded 12 hole of the fastening projection to force the first and second portions of 13 the interface toward one another.

14 19. The watercraft of claim 16, wherein the at least one fastening assembly 15 is further configured for maintaining the channel of the first portion in registry with the hole of the second portion when the at least one 16 fastening assembly is fastened and the channel is spaced apart from 17 the second plate.

18 20. The watercraft of claim 14, further comprising at least one guiding 19 assembly for maintaining the channel of the first portion in registry with the hole of the second portion when the at least one fastening 20 assembly is fastened and the channel is spaced apart from the second 21 plate.

22 21. The watercraft of claim 20, wherein the at least one guiding assembly 23 comprises a plurality of fins extending upwardly from the second plate of the second portion, and the periphery of the hole, the fins being 24 configured for positioning the channel of the first portion in registry 25 with the hole of the second portion as the first and second portions of the interface are forced toward one another. 26

27 * * * *

28 1 25. The watercraft of claim 14, further comprising a lock mechanism for removably securing the propulsion mechanism to the interface, 2 wherein the lock mechanism is mounted in the channel of the 3 second portion of the interface.

4 B. CONSTRUCTION 5 1. “well extending between the deck portion and the hull portion” 6 Pelican proposes that “well extending from the deck to the hull” means “an opening 7 from the deck to the hull.” Hobie Cat appears to agree that “well” means “opening,” but 8 argues that the remainder of the disputed claim term does not require any further 9 construction. As set forth on the record at the Hearing, the Court concludes the term 10 “well” means “opening,” and that no further construction of the remainder of the 11 disputed claim term is necessary. (Tr. at 23:20–24.) 12 2. “plate” 13 Hobie Cat proposes that the term “plate” be construed as “flat structure.” Pelican 14 alleges no construction is necessary and that “plate” should take its plain and ordinary 15 definition. It further contends that Hobie Cat’s proposal is overly narrow because it would 16 import from thin air the limitation that a “plate” is a “perfectly flat” structure without any 17 “surface features,” and proposes, in the alternative, that this Court construe the term as 18 “generally flat structure” if it finds construction necessary. (See id. at 26:18–25.) As set 19 forth on the record at the Hearing, the Court concludes the term “plate” means “generally 20 flat structure.” (Id. at 29:1–5.) 21 3. “channel extending from the first plate . . .” 22 Pelican proposes that the disputed claim phrase “channel extending from the first 23 plate . . . for mounting the propulsion mechanism to the interface” be construed as 24 “structure projecting from the first plate into the well to define a passageway, and that 25 receives and mechanically supports the propulsion mechanism.” Conversely, Hobie Cat 26 avers that “channel” means “a hollow structure defining passageway through the 27 interface,” and argues the remainder of the disputed claim phrase need not be construed. 28 1 As set forth on the record at the Hearing, the Court concludes the term “channel” means 2 “structure defining passageway,” and that no further construction of the remainder of 3 the disputed claim term is necessary. (Id. at 37:19–21.) 4 4. “about the periphery” 5 Hobie Cat proposes that the term “about the periphery” be construed as “completely 6 around the outer recess.” Pelican contends that Hobie Cat’s proposal imports the claim 7 limitation that the interface must go “completely” around the outer recess of the well of the 8 watercraft, which Pelican avers is belied by the intrinsic evidence. It alleges that no 9 construction is necessary and that the term’s plain and ordinary meaning should govern, 10 or, alternatively, that “about the periphery” means “along the edge.” As set forth on the 11 record at the Hearing, the Court concludes the term “about the periphery” means 12 “around the edge.” (Id. at 43:14–44:1.) 13 5. “fastening assembly” 14 Hobie Cat argues that the term “fastening assembly,” which is used frequently 15 throughout the claims, is means-plus-function, for it is a nonce word that has no plain or 16 established structural meaning and is limited by a statement of function—“for removably 17 fastening”—in claims 14 through 16. Accordingly, Hobie Cat avers Section 112(f) should 18 apply despite the absence of the word “means” in the disputed claim language. Pelican 19 contends that Hobie Cat has failed to overcome the rebuttable presumption that Section 20 112(f) is inapplicable because “fastening assembly” fits neatly within the types of devices 21 the Federal Circuit, and other courts, have found take their names from the function they 22 perform but nonetheless connote sufficient structure because they are understood by 23 ordinary artisans to refer to a class of structures. 24 As mentioned above, it is well settled that a claim limitation that uses the word 25 “means” invokes a rebuttable presumption that Section 112(f) applies, and it is equally well 26 understood that the absence of that word triggers a rebuttable presumption Section 112(f) 27 does not apply. See Williamson, 792 F.3d at 1349. Here, there is no dispute the claim term 28 at issue omits the word “means.” Thus, the Court must assess whether Hobie Cat can 1 overcome the rebuttable presumption weighing in Pelican’s favor. To do so requires 2 answering whether the term “fastening assembly” “is one that is understood to describe a 3 structure, as opposed to a term that is simply a nonce word or a verbal construct that is not 4 recognized as the name of structure and is simply a substitute for the term ‘means for.’” 5 Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1360 (Fed. Cir. 2004), 6 overruled on other grounds, Williamson, 792 F.3d at 1339. 7 The parties appear to agree the term “assembly,” standing alone, does not recite 8 sufficient structure. See Transocean Offshore Deepwater Drilling, Inc. v. Stena Drilling 9 Ltd., No. H-08-3287, 2014 WL 5460588, at *13 (S.D. Tex. Oct. 27, 2014) (holding 10 “assembly,” standing alone is a nonce term); Vistan Corp. v. Fadei USA, Inc., No. 10-CV- 11 4862, 2012 WL 1496099, at *15 (N.D. Cal. Apr. 27, 2012) (“[T]he unadorned term 12 ‘assembly’ has no physical or structural component.”). Indeed, “assembly” is akin to other 13 terms, like “mechanism,” “element,” and “device,” which the Federal Circuit identified in 14 Williamson as “generic,” or “nonce words that reflect nothing more than verbal constructs 15 . . . tantamount to using the word ‘means’ because they ‘typically do not connote sufficient 16 definite structure.’” Id. at 1350 (quoting Mass. Inst. of Tech. & Elecs. for Imaging, Inc. v. 17 Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006)). 18 However, as the precedents upon which Hobie Cat relies instruct, a challenger 19 cannot overcome the rebuttable presumption Section 112(f) does not apply simply by 20 demonstrating the disputed claim language includes a well-established nonce word. 21 Rather, Federal Circuit precedent is clear that where, as here, a nonce phrase immediately 22 is preceded by an adjectival modifier, the Court must determine whether that modifier 23 “imparts sufficiently definite structure from the perspective of one skilled in the art.” 24 Vistan Corp., 2012 WL 1496099, at *5 (citing Greenberg, 91 F.3d at 1580). “[I]n 25 circumstances in which ‘[a] structure-connoting term . . . is coupled with a description of 26 [its] operation, sufficient structural meaning generally will be conveyed to persons of 27 ordinary skill in the art.” Williamson, 770 F.3d at 1378 (quoting Linear Tech. Corp. v. 28 Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004)); see also MIT, 462 F.3d at 1 1354 (holding “[c]laim language that further defines a generic term like ‘mechanism’ can 2 sometimes add sufficient structure to avoid” Section 112(f)); Welker Bearing Co. v. PHD, 3 Inc., 550 F.3d 1090, 1096–97 (Fed. Cir. 2008) (discussing the significance of “adjectival” 4 modifiers of generic terms and finding significant the absence of such modifier preceding 5 “mechanism”). 6 Pelican likens the term “fastening” to other nouns the Federal Circuit has found work 7 as adjectival modifiers that import structure to nonce words like “assembly.”6 See, e.g., 8 Greenberg, 91 F.3d at 1583 (holding noun “detent” modifying “mechanism” denoted a 9 device with a generally understood meaning in the mechanical arts); Lighting World, 382 10 F.3d at 1359–63 (holding the term “connector” modified “assembly” to denote a device 11 with a generally understood meaning in the mechanical arts); Personalized Media Comms, 12 161 F.3d at 705 (holding the term “digital” modifying “detector” denoted a device with a 13 generally understood meaning in the relevant art); CCS Fitness, Inc. v. Brunswick Corp., 14 288 F.3d 1359, 1369 (Fed. Cir. 2002) (holding “reciprocating member” is not restricted by 15 Section 112(f)). In support of that premise, Pelican directs this Court to Blackbird Tech 16 LLC v. ELB Elecs., No. 15-cv-56 (RGA), 2016 WL 7451622, at *4–5 (D. Del. Dec. 28, 17 2016) (“Blackbird”), vacated on other grounds, 895 F.3d 1374 (Fed. Cir. 2018), in which 18 the Blackbird Court construed “fastening mechanism” as denoting sufficient structure to 19 evade application of Section 112(f). Specifically, using general dictionary sources to reach 20 its conclusion, the Blackbird Court found 21 A person of ordinary skill in the art would understand a “fastening mechanism” to be a fastener. Fasteners are a generally understood class of 22 physical structures. 23 * * * * 24

25 26 27 6 “[A]n adjectival . . . modifier is a ‘word, phrase, or clause that works like an adjective.” The 28 1 “Fastening” and “fastener” . . . are basically interchangeable words. Both are nouns.[7] “Fastening,” Webster’s Third New International Dictionary, 2 Unabridged (Online Ed.) (accessed Dec. 9, 2016); “Fastening,” Oxford 3 English Dictionary (Online Ed.) (accessed Dec. 9, 2016). Both relate to making something fast or secured. Id. In fact, one dictionary includes 4 “fastener” as a definition of [“]fastening[“]. Webster’s, supra. 5 6 Id., at *5 (alterations added). This Court finds the Blackbird Court’s interpretation 7 instructive given the similarity of the term at issue in the ‘189 Patent (“fastening assembly,” 8 in the ‘189 Patent, and “fastening mechanism,” in the Blackbird patent). 9 Conversely, the Court finds the three competing nonbinding precedents proffered by 10 Hobie Cat easily distinguishable. As an initial matter, in two of the cases identified by 11 Hobie Cat, the disputed language of the patents at issue actually used the word “means” in 12 conjunction with “fastening.” See Bidco, Inc. v. The Plastic Lumber Co., No. C-02-4429 13 JCS, 2004 WL 5644702, at *3–5 (N.D. Cal. Nov. 10, 2004) (holding Section 112(f) 14 invoked by “fastening means” limitation); EMD Millipore Corp. v. Allpure Techs., Inc., 15 No. 11-CV-10221-DPW, 2012 WL 4862772, at *11 (D. Mass. Oct. 11, 2012) (construing 16 “a fastening and centering means for removable locking” to invoke Section 112(f)). These 17 cases are inapposite, for they involve instances in which the challenger had successfully 18 invoked a rebuttable presumption of Section 112(f)’s applicability. Here, there is a 19 rebuttable presumption that Section 112(f) is inapplicable, given the absence of the word 20 “means” from the disputed language, and thus it is the challenger, Hobie Cat, who bears 21 the burden of overcoming that presumption. Hobie Cat must show that the term “fastening” 22 does not impart sufficient structure such that an ordinary artisan would be unable to 23 decipher the meaning of the term fastening assembly. Crucially, Hobie Cat does not draw 24 the Court’s attention to intrinsic or extrinsic evidence to carry that burden. 25 Second, Hobie Cat cites In re Matter of Certain Portable Gaming Console Sys., Inv. 26 No. 337-TA-1111, 2018 WL 6837938 (ITC Dec. 7, 2018), aff’d, 2019 WL 9596568 (Oct. 27 7 Hobie Cat avers that “fastening” is a gerund. However, as the Blackbird Court’s reference to 28 1 19, 2019), aff’d sub nom, Gamevice, Inc. v. Int’l Trade Comm’n, 877 F. App’x 929 (Mem.) 2 (Fed. Cir. May 12, 2021) (per curiam) (“Gamevice”), in which the presiding Administrative 3 Law Judge (“ALJ”) concluded the term “fastening mechanism” did not connote structure. 4 The ALJ reached that decision after reading the patent and finding “the specification . . . 5 lacked meaningful discussion of the fastening mechanism that would indicate the term has 6 sufficiently definite meaning as the name for structure.”8 Conversely, here, the 7 specification of the ‘189 Patent discloses numerous concrete structural examples that 8 correspond to the term fastening assembly. In particular, the specification recites, inter 9 alia, “threaded fasteners,” “rivets,” “holes” or “threaded holes,” “threaded bores,” and 10 “recesses.” (‘189 Patent at 2:45–3:14, 4:10–34, 8:52–9:2, 10:6–9, 10:28, 11:40, 11:49–52, 11 14:40–41, 14:47, 15:13–49, 17:18–39.) 12 More importantly, the ALJ in Gamevice reached his conclusion without consulting 13 technical, or even general, dictionary sources to interpret the disputed term through the lens 14 of an ordinary artisan. Yet the Federal Circuit has repeatedly condoned the use of 15 dictionaries “to determine if a disputed term has achieved recognition as a noun denoting 16 structure, even [where] the noun is derived from the function performed.” Lighting World, 17 382 F.3d at 1360–61; see, e.g., Greenberg, 91 F.3d at 1583 (“Dictionary definitions make 18 clear that the noun ‘detent’ denotes a type of device with a generally understood meaning 19 in the mechanical arts, even though the definitions are expressed in functional terms.”); 20 Linear Tech., 379 F.3d at 1320 (consulting technical dictionary to determine whether term 21 “circuit” connotes structure); Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 22

23 8 The Court observes that the inquiry whether a claim term has sufficient structure is not whether the specification provides a corresponding embodiment, but whether the disputed term brings to mind 24 sufficient structure in common parlance or in the parlance of an ordinary artisan. See SPH Am., LLC v. 25 AT&T Mobility, LLC, No. 13-cv-2318-CAB-KSC, 2015 WL 12831674, at *4 (S.D. Cal. June 9, 2015) (“It is not sufficient to conclude . . . that as long as the specification provides a corresponding structure, the 26 claim term has sufficient definite structure to avoid the application of Section 112(f). Otherwise, one would presumably use any term, no matter how vague or generic, provided it is not ‘means for,’ to describe 27 a claim limitation and avoid the requirements of Section 112(f). For the term to have sufficient definite structure, it must be used in ‘common parlance or by persons of skill in the pertinent art to designate 28 1 (Fed. Cir. 2002) (“Dictionaries are always available to the court to aid in the task of 2 determining that would have been attributed by those of skill in the relevant art to any 3 disputed terms used by the inventor in the claims.”). 4 As the Blackbird Court observed, general dictionary sources confirm “fastening” 5 connotes structure even in common parlance. 2016 WL 7451622, at *4–5 (relying upon 6 Webster’s and Oxford general source dictionaries to find “fastening” refers to a class of 7 structures, or “fasteners,” in common parlance). Moreover, the technical dictionary 8 proffered by Pelican renders with even greater clarity that when the structure-connoting 9 term “fastening” is coupled with “assembly,” sufficient structural meaning generally will 10 be conveyed to an ordinary artisan. In particular, “Fastenings,” is defined by The 11 Illustrated Dictionary of Boating Terms 57 (2000) as a set of structures, namely, “[t]he 12 screws, bolts, etc., holding a boat together.” See Williamson, 770 F.3d at 1378 (“Technical 13 dictionaries, ‘which are evidence of understandings of persons of skill in the technical arts’ 14 may inform whether claim terms connote structure.” (quoting Linear Tech., 379 F.3d at 15 1320)). 16 Hobie Cat’s principal argument in favor of Section 112(f)’s application essentially 17 boils down to the following premise: “fastening assembly” is a means-plus-function 18 limitation because it brings to mind a broad class of structures—fasteners—rather than a 19 specific structure—e.g., a threaded hole or threaded fastening projection. Indeed, Hobie 20 Cat draws the Court’s attention to five other patents, each of which use the term “fastening 21 assembly” to describe a different structure, namely, “platens,” “clips,” “anchoring blocks,” 22 “shoelaces,” “knobs,” “tubular members,” “bone plates,” “brushings,” “bores,” “strips with 23 hooks.” (See ECF Nos. 41-5–41-9.) The Federal Circuit uniformly rejected precisely this 24 same argument on several occasions. See Personalized Media, 161 F.3d at 705 (“[N]either 25 the fact that a ‘detector’ is defined in terms of its function, nor the fact that the term 26 ‘detector’ does not connote a precise physical structure in the minds of those of skill in the 27 art detracts from the definiteness of structure.”); Lighting World, 382 F.3d at 1354 (“In 28 considering whether a claim term recites sufficient structure to avoid application of 1 [Section 112(f)], we have not required the claim term to denote a specific structure. 2 Instead, we have held that it is sufficient if the claim is used in common parlance or by 3 persons of skill in the pertinent art to designate structure, even if the term covers a broad 4 class of structures . . .” (citing Greenberg, 91 F.3d at 1583)). Consequently, the Court finds 5 Hobie Cat’s argument unavailing. Thus, on the instant record, the Court concludes Hobie 6 Cat has not demonstrated Section 112(f) should apply to the term “fastening assembly.” 7 Having determined the threshold Section 112(f) analysis, the Court must determine 8 whether and how to construe the term “fastening assembly.”9 Pelican avers that the term 9 does not require construction. Alternatively, Pelican urges the Court to adopt “fastener(s)” 10 as the meaning for “fastening assembly.” Hobie Cat proposes that “fastening assembly” 11 means “a group of components used for fastening.” 12 As explicated above, the intrinsic and extrinsic evidence consulted by the Court 13 makes clear that “fastening assembly” refers, both in common parlance and in the eyes of 14 an ordinary artisan, to a broad set of structures, also known as “fasteners.” Thus, the Court 15 finds ample support in the record for Pelican’s alternate construction. Accordingly, the 16 Court construes “fastening assembly” as “fastener” and finds the remainder of the 17 disputed claim term denoted in the Chart does not require any further interpretation. 18 6. “in registry with” 19 Pelican proposes the term “in registry with” means “in alignment with.” Hobie Cat 20 retorts that the limitation does not require construction. As set forth on the record at the 21 Hearing, the Court gives the term “in registry with” its plain and ordinary meaning and 22 finds no specific construction of this term is required.10 (Tr. at 48:19–24.) 23 24 25 26 9 The parties did not provide in their briefings or their arguments at the Hearing any justification 27 for construing any other terms in the phrase identified in the Chart. 10 As set forth on the record at the Hearing, the parties may rely upon expert testimony “to say 28 1 7. “lock mechanism . . .” 2 a. Pelican’s Request for Judicial Correction 3 Pelican argues that claim 25 contains an “obvious” error that warrants correction by 4 this Court. Claim 25 reads in pertinent part: 5 wherein the lock mechanism is mounted in the channel of the second portion of the interface 6

7 (‘189 Patent at 25:25–29.) Pelican asks the Court to change the underlined “second” to 8 “first.” Pelican alleges that this correction is warranted because claim 25 is dependent 9 upon claim 14, which makes clear that the “channel” is located on the “first portion of the 10 interface,” and that nothing in the claims (other than claim 25) or specification provide for 11 a “channel” on the “second portion of the interface.” Hobie Cat opposes Pelican’s request, 12 averring that Pelican must pursue correction through the Patent Office because there is a 13 reasonable debate whether the claimed language is correct.11 Hobie Cat further argues that, 14 should the Court reject Pelican’s request for judicial correction, it must rule claim 25 15 indefinite in light of the absence of an antecedent basis for the term “the second portion of 16 the interface.” 17 Looking to the claim language, the Court finds Pelican’s position well-supported. 18 See Pulse, 2009 WL 755321, at *9 (examining claim language to determine whether errors 19 identified by plaintiff were “obvious”). Claim 25 is dependent upon independent claim 14, 20 which provides in pertinent part, “the interface including: a first portion including a first 21 plate . . . and at least one channel extending from the first plate.” (‘189 Patent at 19:3–6.) 22 The language in claim 14 makes clear that the “first portion” of the “interface” includes “a 23 11 As Hobie Cat explains in its briefing, whether the Court opts to issue a judicial correction may 24 be dispositive of Hobie Cat’s asserted noninfringement as it relates to Claims 25 and 26. According to 25 Hobie Cat, the accused device’s “locking mechanism interfaces” in the “first portion” of the “interface,” and, thus, is distinguishable from Claim 25. Although the Court appreciates Hobie Cat’s contextualizing 26 the legal implication of this issue, “[i]t is well-settled that claims may not be construed by reference to the accused device.” Neomagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062, 1074 (Fed. Cir. 2002). 27 Rather, the relevant inquiry here is whether the error identified by Pelican is “obvious” based on the claim language and specification and whether the prosecution history of the ‘189 Patent suggests a different 28 1 channel.” The “second portion of the interface” is not introduced until claim 15, upon 2 which claim 25 is not dependent. Neither claim 15 nor any other claim in the ‘189 Patent 3 recites the “second portion” of the “interface” as having a “channel.” 4 Hobie Cat argues that there are at least three other ways to correct the supposed error 5 in claim 25. Specifically, Hobie Cat argues that in addition to making the correction 6 Pelican seeks and taking no action at all, rewriting claim 25 to change its dependency to 7 claim 15, which introduces the “second portion” of the “interface,” would also be a 8 reasonable correction. Because there are multiple corrections available, Hobie Cat 9 contends the error identified by Pelican is not obvious. However, the Court finds this 10 argument strained, for in the two alternative corrections suggested by Hobie Cat, “the 11 channel of the second portion” is left without antecedent basis. See Sensor Elec. Tech., 12 Inc. v. Bolb, Inc., No. 18-CV-5194-LHK, 2019 WL 4645338, at *31 (N.D. Cal. Sept. 24, 13 2019) (“For a claim term to have antecedent basis support, an indefinite article (for 14 instance, ‘a’ or ‘an’) must precede a claim term the first time the claim term is used in the 15 claims. Subsequent references in the claims to the claim term must be preceded by a 16 definite article (for instance, ‘the’ or ‘said’)” (citing Microprocessor Enhancement Corp. 17 v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008)). If the court were to do 18 nothing, claim 25 would remain dependent upon claim 14, and introduce with a definite 19 article an element that has no anchor in claim 14—“the channel of the second portion.” If 20 the Court were to adopt Hobie Cat’s alternative correction, although “the second portion” 21 would have an antecedent basis, the term “the channel” would not, for claim 15 does not 22 recite “a channel,” let alone “a channel of a second portion of the interface.” Put simply, 23 Hobie Cat’s proposal would introduce new errors and assume mistakes in the claim 24 language that Pelican does not allege. 25 Only Pelican’s proposed correction maintains dependency and provides an 26 antecedent basis, thus, there is no reasonable debate that “second portion” in claim 25 27 should be “first portion.” Accordingly, the Court construes the relevant section of Claim 28 1 25 to read “wherein the lock mechanism is mounted to the channel of the first portion 2 of the interface.” 3 b. Claim Construction 4 Hobie Cat urges this Court to construe the term “lock mechanism” in claim 25 as a 5 means-plus-function term. Pelican opposes. 6 The analysis whether “lock mechanism” is governed by Section 112(f) is identical 7 to the Court’s analysis of the claim term “fastening assembly.” As with “fastening 8 assembly,” there is no dispute a rebuttable presumption exists that Section 112(f) does not 9 apply. Furthermore, there is no dispute the term “mechanism,” on its own, does not 10 connote specific structure. See Williamson, 792 F.3d at 1350 (“Generic terms such as 11 ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than 12 verbal constructs may be used in a claim in a manner that is tantamount to using the word 13 ‘means’ because they ‘typically do not connote sufficient definite structure’ and therefore 14 may invoke [Section 112(f)].” (quoting MIT, 462 F.3d at 1354)) (emphasis added). 15 As with “fastening assembly,” Section 112(f)’s applicability hinges upon whether 16 the word “lock” imparts sufficient structure to the word “mechanism,” such that an 17 ordinary artisan would understand the phrase in its entirety to connote structure, as opposed 18 to function. See Vistan Corp., 2012 WL 1496099, at *5. What makes the analysis of “lock 19 mechanism” easier than the Court’s analysis of “fastening assembly” is that the Federal 20 Circuit has explicitly identified “lock” among a class of devices that appear to describe a 21 function, but actually have well-understood meaning in the arts as the name for a structure. 22 See Greenberg, 91 F.3d at 1584. Other courts that have confronted similar terms have 23 found that the word “lock” imparts sufficient structure and concluded Section 112(f) does 24 not apply merely by virtue of the fact the word “lock” takes its name from the function that 25 that structure performs. See Integrity Worldwide, LLC v. Rapid-EPS Ltd., No. 3:17-CV- 26 0055-K, 2018 WL 3609430, at *5 (S.D. Cal. May 29, 2018) (relying on Greenberg, 91 27 F.3d at 1584 to find “locking mechanism” conveys structure). Consistent with the Federal 28 Circuit’s ruling in Greenberg that “lock” imparts structure when coupled with 1 “mechanism,” this Court finds that “lock mechanism,” as used in the ‘189 Patent, is not a 2 means-plus-function claim element. That conclusion is bolstered by the technical 3 dictionary source proffered by Pelican in support of its position. (See “Lock Mechanism,” 4 Glosbe Online Dictionary, Ex. C to Lyons Decl., ECF No. 44-4 (defining “lock 5 mechanism” as “movable between a locked position in which the lock mechanism 6 frictionally engages the lock link and an unlocked position in which the lock link is free to 7 slide relative to the lock mechanism.”).) 8 Having found Section 112(f) inapplicable, the Court now turns to the proposed 9 construction of Pelican and Hobie Cat’s alternative construction of the term “lock 10 mechanism.”12 Pelican proposes the term mean “mechanism for locking and unlocking.” 11 Hobie Cat proposes that the term should mean “mechanism.” “The plain and ordinary 12 meaning of a ‘lock[] mechanism’ is just what it sounds like, i.e., a structure that is used to 13 lock [and unlock] something,” in this case, a propulsion mechanism. See Integrity 14 Worldwide, 2018 WL 3609430, at *5. The Court finds that Pelican’s proposal encapsulates 15 that plain and ordinary meaning, whereas Hobie Cat’s proposal that the term mean 16 “mechanism” does not connote any specific structure and circuitously creates a Section 17 112(f) issue where the Court has already found none exists. 18 Accordingly, the Court construes “locking mechanism” as “mechanism for 19 locking and unlocking” and finds the remainder of the disputed claim language does not 20 require further construction. 21 8. “first segment,” “second segment,” “first and second segments” 22

23 Claims 17 and 18 refer to the “first segment” and “second segment” “of the at least 24 one fastening assembly.” Pelican contends these terms are clear and thus require no 25 specific construction by the court. Conversely, Hobie Cat proposes that “first segment” 26

27 12 The parties did not provide in their briefings or their arguments at the Hearing any justification for construing any other terms in the phrase identified in the Chart. 28 1 means “a threaded fastener engaging the first plate of the first portion” and “second 2 segment” means “a fastening projection provided on the second portion with a threaded 3 hole into which the threaded fastener is engageable.” 4 As explained on the record at the Hearing, on the face of the ‘189 Patent, there is no 5 perceptible reason to construe these disputed claim terms. (Tr. at 75:19–29, 80:17–81:3.) 6 It is clear therefrom that “first segment” refers to the “first segment of the at least one 7 fastening assembly” and “second segment” refers to the “second segment of the at least 8 one fastening assembly.” In common parlance, these terms refer to the constituent parts of 9 a “fastening assembly.” (See Merriam-Webster’s Advanced Learner’s English Dictionary 10 1471 (2017), Ex. K, Lyons Decl., ECF No. 40-12 (defining “segment” as “one of the parts 11 into which something can be divided”).) 12 Conversely, Hobie Cat’s proposed construction seeks to impart limitations from the 13 specification and claim 18 (“threaded fastener” and “threaded hole) into claim 17 and to 14 render superfluous language later appearing in dependent claim 18. 13 In other words, by 15 its proposal Hobie Cat seeks to violate two bedrock principles of claim construction at 16 once. See Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 17 2000) (rejecting a claim construction that would render another claim term superfluous); 18 Phillips, 415 F.3d at 1316 (rejecting “the contention that if a patent describes only a single 19 embodiment, the claims of the patent must be construed as being limited to that 20 embodiment.”); SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys. Inc., 242 F.3d 21 1337, 1340 (Fed. Cir. 2001) (reading a limitation from the specification into a claim is “one 22 of the cardinal sins of patent law”); Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 23 1348 (Fed. Cir. 2009) (“The patentee is entitled to the full scope of his claims, and we will 24

25 13 Hobie Cat’s construction goes further than limiting the claims to a single embodiment. Indeed, 26 the specification recites numerous structures that correspond to “fastening assembly,” namely, threaded fasteners,” “rivets,” “holes” or “threaded holes,” “threaded bores,” and “recesses.” (‘189 Patent at 2:45– 27 3:14, 4:10–34, 8:52–9:2, 10:6–9, 10:28, 11:40, 11:49–52, 14:40–41, 14:47, 15:13–49, 17:18–39.) But Hobie Cat seeks to limit the composition of the “first” and “second segments” and, thus, “the at least one 28 1 not limit him to his preferred embodiment or import a limitation from the specification into 2 the claims.”). This Court will not entertain such a proposed construction and finds that 3 Hobie Cat’s proposal is unsupported by the intrinsic evidence. 4 Accordingly, the court gives the terms “first segment,” “second segment,” and 5 “first and second segments” their plain and ordinary meanings and finds no specific 6 construction of this term is required. 7 9. “the hole . . .the second portion . . .” 8 Claim 20 of the ‘189 Patent reads: 9 The watercraft of claim 14, further comprising at least one guiding assembly for maintaining the channel of the first portion in registry with the hole of 10 the second portion when the at least one fastening assembly is fastened and 11 the channel is spaced apart from the second plate

13 (‘189 Patent at 20:6–9.) The parties agree that, with the exception of the terms highlighted 14 in bold and addressed elsewhere in this Order, the language in this claim need not be 15 construed. However, Pelican argues that claim 20 contains an error and, again, seeks 16 judicial correction thereof. Specifically, Pelican asks that the Court amend claim 20 such 17 that the definite articles underlined above (“the”) be changed to indefinite ones (“a”). 18 Conversely, Hobie Cat alleges the asserted error is not an obvious one because there are 19 other reasonable corrections that might apply. Consequently, Hobie Cat avers claim 20 is 20 indefinite for lacking a proper antecedent basis, and requests that it be invalidated. 21 a. Judicial Correction 22 As mentioned above, courts have discretion to correct patent language only in 23 limited circumstances. See Novo Indus, 350 F.3d at 1357. The apparent error must be 24 obvious and, thus, not subject to reasonable debate, and the prosecution history must not 25 belie the assertedly appropriate correction. Id. Pelican alleges that an ordinary artisan 26 would understand the patentee’s use of a definite article in the above-referenced instances 27 to be a scrivener’s error because independent claim 14, upon which claim 20 depends, does 28 not mention the elements “hole,” “second portion of the interface” and “second plate.” 1 According to Pelican, claim 20 sought to introduce these elements. However, as Hobie Cat 2 correctly observes, claim 15 introduces precisely those same elements. (See ‘189 Patent at 3 19:13–23 (“the interface further comprises a second portion including a second plate . . . 4 the second plate comprising a hole sized and shaped for receiving therethrough a portion 5 of the propulsion mechanism”) (emphasis added).) Thus, contrary to Pelican’s assertion 6 otherwise, it is not obvious claim 20 sought to introduce new elements. Indeed, it is equally 7 reasonable to infer the error at issue in claim 20 is the patentee’s mistaken reference to 8 claim 14, as opposed to claim 15, as the independent claim upon which claim 20 depends. 9 Pelican insinuates that the statutory presumption of validity requires the Court to 10 issue its proposed correction. That is not the standard instructed by the Federal Circuit. 11 See Novo Indus, 350 F.3d at 1357 (instructing courts may only correct minor errors that 12 are (1) obvious and (2) not contradicted by prosecution history). The presumption of 13 validity is not carte blanche for courts to rewrite claims. See Chef Am., 358 F.3d at 1374 14 (“This court, however, repeatedly and consistently has recognized that courts may not 15 redraft claims, whether to make them operable or to sustain their validity.”) 16 Because it is unclear whether claim 20’s use of a definite article was error, or 17 whether its terms “the hole,” “the second portion,” and “the second segment” make 18 reference to those same elements disclosed in claim 15, judicial correction is inappropriate 19 here. 20 b. Invalidity 21 Hobie Cat argues that absent judicial correction, the Court should find claim 20 22 invalid because the elements “hole,” “second portion of the interface” and “second plate” 23 each lack antecedent basis, rendering the claim indefinite. A claim is “indefinite if a 24 [claim] term does not have proper antecedent basis.” Halliburton Energy Servs., Inc. v. 25 M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). “For a claim term to have antecedent 26 basis support, an indefinite article (for instance, ‘a’ or ‘an’) must precede a claim term the 27 first time the claim term is used in the claims. Subsequent references in the claims to the 28 claim term must be preceded by a definite article (for instance, ‘the’ or ‘said’).” Bolb, 2019 1 WL 4645338, at *31 (citing Microprocessor Enhancement, 520 F.3d at 1375); see also 2 Automated Techs., Inc. v. Microfil, LLC, 244 F. App’x 354, 359 (Fed. Cir. 2007) (“[C]laim 3 term employing definite article ‘the’ . . . requir[es] an antecedent basis.”). 4 “Antecedent basis is necessary so that those with skill in the art can ascertain the 5 scope of a patent and its claimed inventions with ‘reasonable certainty.’” Id. (quoting 6 Nautilus, 572 U.S. at 910). Where the subject claim is a dependent claim, antecedent basis 7 may be found (1) in the dependent claim itself or (2) the independent claim from which the 8 dependent claim depends. See In re Downing, 754 F. App’x 988, 990–91 (Fed. Cir. 2018) 9 (looking for antecedent basis for a claim term in the same claim in which the claim term 10 appears); Automated Techs., 244 F. App’x at 359 (searching for antecedent basis for a 11 dependent claim term in the independent claim from which the dependent claim depends). 12 The Federal Circuit’s opinion in Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338 13 (Fed. Cir. 2008) is instructive. In Baldwin, the Federal Circuit held that “a claim limitation 14 lacks antecedent basis,” thus rendering the claim indefinite, “where it would be unclear as 15 to what element the limitation was making reference.” Id. at 1343. By way of example, it 16 illustrated that “if two different levers are recited earlier in [a] claim, the recitation of ‘said 17 lever’ in the same or subsequent claim would be unclear where it is uncertain which of the 18 two levers was intended.” Id. 19 However, that a claim lacks an antecedent basis does not automatically trigger a 20 finding of indefiniteness. See In re Downing, 754 F. App’x at 996 (“A claim term that 21 lacks an antecedent basis may, but does not necessarily, render a claim indefinite.” (citing 22 Manual of Patent Examining Procedure § 2173.05(e) (9th ed. 08.2017 rev., 2020)). Rather, 23 “as long as the claim ‘apprises one of the ordinary skill in the art of its scope and, therefore, 24 serves the notice function required by [Section 112(b)],” it is not error for a court to reject 25 a request to find the claim term indefinite. Id. 26 There appears to be no dispute that the terms “hole,” “second portion of the 27 interface” and “second plate,” in claim 20 lack antecedent basis. Nevertheless, in the 28 context of the specification and claims, it would be clear to an ordinary artisan the “hole,” 1 “second portion,” and “second plate” to which claim 20 refers. Indeed, the specification 2 || provides that there is only one “hole of the second portion,” (see, e.g., ‘189 Patent at □□□□□ 3 (“Defined at the center of the bottom plate 306 is an elongated hole 312 sized and shaped 4 ||for allowing the passage of a portion of the propulsion mechanism”), 10:49—50 (“the 5 elongated hole 312 of the bottom portion”)), one “second portion,” or bottom portion, “of 6 || the interface” (see, e.g., id. at 17:13—15 (“it will also be understood that the interface could 7 comprised only one of the top and bottom portions (e.g., top portion 304 or bottom 8 || portion 302)”)), and one “second plate” (see, e.g., id. at 9:32—34 (“the bottom portion 302 9 comprises a plate 306”), 9:36-38 (“Defined at the center of the bottom plate 306 is an 10 elongated hole 312”)). The ‘189 Patent’s drawings confirm an ordinary artisan would 11 |}/understand the meaning of the elements lacking antecedent basis in claim 20 and, thus, 12 || would understand the scope of claim 20 itself."4 13 302 14 ™~ 15 eco ame con 3828 16 \ / vol / /

__/Ke Yoh ——— 208 19 \ 20 310 21 FIG.19 22 23 24 25 26 27 || ——_—— 28 The Court highlights in yellow the structures in Figures 19 and 20 that correspond to the elements “hole,” “second portion,” and “second plate. ~I7 -

l 302 2 \ 3 310 4 330c — a 330a 5 6 368 7 | 8 Yo 9 10 Ue 11 330d —— *———_a30b 12 13 FIG.20 14 15 16 Hobie Cat has not endeavored to show an ordinary artisan would have a different 17 || understanding of the disputed elements. 18 Accordingly, the Court declines at this time to invalidate claim 20 for 19 || indefiniteness. 20 J. “guiding assembly” 21 1. Lexicography 22 Hobie Cat argues that the patentee of the ‘189 Patent defined the term “guiding 23 ||assembly” using its own lexicography. Pelican opposes, averring that the assertedly 24 || definitional language identified by Hobie Cat does not suggest an intent to expressly define 25 term, but rather, read in the context of the surrounding language, illustrates an example 26 || of an embodiment of a “guiding assembly,” without excluding other embodiments. 27 As mentioned above, to act as a lexicographer, the patentee must “exhibit an express 28 intent to impart a novel meaning to claim terms.” Bell Atl. Network Servs., Inc. v. Covad

~ IRL

1 Comms. Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001); see also Irdeto Access, Inc. v. 2 Echostar Satellite Corp., 383 F.3d 1295 (Fed. Cir. 2004) (finding that patentee must 3 “clearly state[] any special definitions of the claim terms in the patent specification or file 4 history.”) “This clear expression need not be in haec verba but may be inferred from clear 5 limiting descriptions of the invention in the specification or prosecution history.” Aventis 6 Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). Words such as 7 “meaning” and “defined as” may offer an express definition. See Edward Lifesciences LLC 8 v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2000). So too may the specification’s use of 9 “i.e.” “signal an intent to define the word to which it refers.”15 Id.; see also Abbott Labs v. 10 Novapharm Ltd., 323 F.3d 1324, 1327, 1330 (Fed. Cir. 2003) (finding patentee acted as 11 own lexicographer when it “explicitly defined” claim term through use of “i.e.”); accord 12 OpenTV, Inc. v. Apple, Inc., No. 14-cv-1622-HSG, 2015 WL 3544845, at *11–12 (N.D. 13 Cal. June 5, 2015) (holding use of “i.e.” in the specification shows that the applicant was 14 acting as his own lexicographer in defining claim term “redraw”); Vitamix Corp. v. Blentec, 15 Inc., 2016 WL 2944150, at *4 (N.D. Ohio May 20, 2016) (“By using the phrase ‘that is’ 16 the patentee demonstrated his intent to define the term [to which ‘that is’ refers].”); cf. 17 Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373 (Fed. Cir. 2014) (“Had the 18 phrase been cast as a definition instead of as an example—if the phrase had been preceded 19 by ‘i.e.’ instead of ‘e.g.’–then it would help provide the clarity that the specification 20 lacks.”). 21 While it is true, as Hobie Cat observes, Pelican provides no authority for the premise 22 lexicography is precluded where a patentee defines a term in order to illustrate an 23 exemplary embodiment, this Court’s own research discloses several such instances in 24 which the Federal Circuit held exactly that. See Toshiba Corp. v. Imation Corp., 681 F.3d 25 26 15 As observed by the Ninth Circuit, “[t]he term ‘i.e.’ is the abbreviation for the Latin term id est 27 meaning ‘that is.’ The abbreviation “i.e.” introduces another way of putting what has been already said.” United States v. King, 849 F.2d 1259, 1260 (9th Cir. 1988) (quoting H. Fowler, A Dictionary of Modern 28 1 1358 (Fed. Cir. 2012) (“Toshiba”); see also Dealertrack, Inc. v. Huber, 674 F.3d 1315 2 (Fed. Cir. 2012). Most notable among those Federal Circuit precedents is Toshiba. 3 In Toshiba, the Federal Circuit found the use of “i.e.” in the subject patent did not 4 authorize a finding the patentee had acted as its own lexicographer. There, the specification 5 provided, in pertinent part: 6 As illustrated in Fig. 2 . . . a number of disc-sides identifier and a disc side identifier are recorded in . . . the disc. It is clear that this information must be 7 provided on each side of the disc—i.e., each recording plane—in order for the 8 disc side identifier to serve its purpose of identifying which side is being recorded/reproduced. 9

10 682 F.3d at 1370. The Federal Circuit concluded it could not infer the patentee acted as its 11 own lexicographer from this language alone. It found the most natural reading of the 12 patentee’s use of the term “i.e.,” in the context of that specific patent, was as “merely 13 explaining that in the example in figure 2 [of the Toshiba patent], a side of the disc 14 constitutes a recording pane,” not that “a recording pane is to be equated with a disc side 15 in all instances.” Id. at 1370–71. 16 The patentee’s use of the term “i.e.” in the specification of the ‘189 Patent that 17 Hobie Cat avers expressly defines the term “guiding assembly” similarly is surrounded by 18 limiting language that manifests the patentee’s attempt to explain an example of a “guiding 19 assembly,” not to expressly define it. (See ‘189 Patent at 12:43–53.) In pertinent part, the 20 ‘189 Patent’s specification provides: 21 22 While in the above embodiment the guiding assembly (i.e. the guiding fins 334a–334d, the fins 354 of the fastening portions 332a–332d and the fins 23 376 of the female portions 334a–334d of the directing assembly 336) are 24 provided on the bottom plate 302 of the interface 300, and the channel 402 is provided on the top portion 304 of the interface, it will be understood that the 25 location of these components could be inverted, where the channel (e.g. 26 channel 402) would be provided on the bottom portion 302 and the guiding assembly would be provided on the top portion 304 of the interface. 27

28 1 (‘189 Patent at 12:43–53.) The underlined language above shows the patentee’s use of 2 “i.e.” does not imply an intent to define expressly “guiding assembly” in all embodiments, 3 but rather only the “guiding assembly” in the “above embodiment.” Accordingly, this 4 language is not sufficiently definite to “signal an intent to define” “guiding assembly.” See 5 Edward Lifesciences, 582 F.3d at 1334. 6 Hobie Cat asserts that the patentee acted as its own lexicographer in yet another 7 instance, where the specification provides, in pertinent part: 8 [t]he directing assembly 336 and the guiding fins 334a–334d, the fins 354 of the fastening portions 332a–332d and the fins 376 of the female portions 9 334a–334d define a guiding assembly. 10 11 (‘189 Patent at 15:6–9 (emphasis added).) Pelican responds this language, too, is 12 exemplary, because an indefinite article immediately precedes “guiding assembly,” as 13 opposed to a definite article (such as “the” or “said”), thus indicating there may be multiple 14 embodiments of a “guiding assembly,” including ones that include different constituent 15 elements. 16 Pelican’s argument invokes the “general plural rule”: a “rule” in patent parlance that 17 “‘a’ or ‘an”’ means “more than one” unless “the specification, or the prosecution history, 18 necessitates a departure.” Baldwin Graphic Sys., 512 F.3d at 1342–43 (citing Abtox Inc. v. 19 Exitron Corp., 122 F.3d 1019 (Fed. Cir. 1997) and Insituform Techs., Inc. v Cat 20 Contracting, Inc., 99 F.3d 1098 (Fed. Cir. 1996)); KCJ Corp. v. Kinetic Concepts, Inc., 21 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“Unless the claim is specific as to the number of 22 elements, the article ‘a’ receives a singular interpretation only in rare circumstances when 23 the patentee evinces a clear intent to so limit the article.”). This Court agrees with Pelican 24 that patent parlance dictates that the patentee’s use of an indefinite article to immediately 25 precede “guiding assembly” precludes a finding the inventors acted as their own 26 lexicographer. See Energy Heating, LLC v. Heat On-The-Fly, LLC, No. 4:13-cv-10, 2014 27 WL 12798742, at *8 (D. N.D. July 7, 2014) (holding indefinite article preceding disputed 28 term precluded finding of lexicography) (citing SanDisk Corp. v. Kingston Tech. Co., 695 1 F.3d 1348, 1360 (Fed. Cir. 2012)); see also Kudlacek v. DBC, Inc., 115 F. Supp. 2d 996, 2 1021–23 (N.D. Iowa 2000) (similar). In so holding, the Court is guided by the bedrock 3 principle of patent law that “[a]lthough the specifications may well indicate that certain 4 embodiments are preferred, particular embodiments appearing in a specification will not 5 be read into the claims when the claim language is broader than such embodiments.” KJC, 6 223 F.3d at 1356. 7 Accordingly, the Court finds that the ‘189 Patent’s patentee did not act as its own 8 lexicographer with respect to the disputed term “guiding assembly.” 9 2. Means-Plus-Function 10 Hobie Cat argues in the alternative that Section 112(f) applies to the term “guiding 11 assembly.” The pertinent language in claim 20 provides: 12 The watercraft of claim 14, further comprising of at least one guiding assembly for maintaining the channel of the first portion in registry with the 13 hole of the second portion where the at least one fastening assembly is 14 fastened and the channel is spaced apart from the second plate.

16 Hobie Cat argues that “guiding assembly” is a nonce term, and the remainder of the claim 17 20 language that immediately follows that phrase is a statement of function. Pelican 18 contends that the word “guiding” imparts sufficient structure to the word “assembly.” 19 There is no dispute here that there is a rebuttable presumption Section 112(f) does 20 not apply given the absence of the word “means” from the claim. See Personalized Media, 21 161 F.3d at 703–04. As with the terms “fastening assembly” and “locking mechanism,” 22 this Court is tasked with assessing whether “guiding” designates structure to the ordinary 23 artisan. See Vistan Corp., 2012 WL 1496099, at *5. Pelican argues that Section 112(f) is 24 inapplicable because the specification provides a corresponding structure and lists a 25 number of concrete elements as examples of this structure. (See ‘189 at 12:43–53, 15:6– 26 9.) This argument misapplies the Section 112(f) analysis. As explained above, supra note 27 8, the question whether a given claim term connotes structure to avoid application of 28 Section 112(f) depends not on whether the specification provides corresponding structure 1 but whether the words employed in the claim are used in ‘common parlance or by persons 2 of skill in the pertinent art to designate structure.” See SPH Am., LLC, 2015 WL 12831674, 3 at *4 (quoting MIT, 462 F.3d at 1356)). 4 In this regard, Pelican fails to provide intrinsic or extrinsic evidence showing that 5 the word “guiding” connotes structure. Indeed, the sources Pelican proffers are not 6 germane. In particular, Pelican provides a general source dictionary definition for the word 7 “guide,” which explains, in part, that that word means “a device, such as a ruler, tab, or 8 bar, that serves as an indicator or acts to regulate a motion or operation[.]” (“Guide,” 9 American Heritage Dictionary (5th ed. 2018), Ex. F to Lyons Decl., ECF No. 40-7.) But 10 claim 20 does not employ the word “guide,” it uses “guiding,” thus rendering Pelican’s 11 extrinsic evidence of little value.16 Pelican offers no other evidence that the term “guiding 12 assembly” is used in either common parlance or in the parlance of an ordinary artisan to 13 designate structure. Nor is such a premise apparent to the Court. 14 Thus, Hobie Cat has overcome the presumption that “guiding assembly” is not a 15 means-plus-function limitation. Accordingly, the Court concludes “Guiding assembly” 16 is governed by 35 U.S.C. § 112(f). Its function is to maintain the channel of the first 17 portion of the interface in registry with the hole of the second portion of the interface 18 when the at least one fastening assembly is fastened and the channel is spaced-apart 19 from the second plate. Its corresponding structure is the directing assembly 336 and the 20 guiding fins 334a–334d, the fins 354 of the fastening portions 332a–332d and the fins 21 376 of the female portions 334a–334d, as shown in Figures 13 and 15–17, and 22 equivalents thereof. 23 24 25

26 16 Pelican also compares the instant patent to the one confronted in Lippert Components Mfg. Inc. v. Morryde Int’l Inc., No. 16-CV-264 JD, 2018 WL 3957203, at *10 (N.D. Ind. Aug. 17, 2017), in 27 which the Lippert Court construed the term “roller guide member,” however, in that case the challenger did not argue that term invoked Section 112(f). In any event, the term “roller guide member” in the 28 1 |}IV. CONCLUSION 2 The Court hereby construes the claims as set forth in this Order and in the attached 3 || Worksheet. 4 IT IS SO ORDERED. 5 A , 6 || DATED: February 1, 2022 Ypilag (Lyohaa é 7 United States District Judge 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ~%2AL

C ase 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1361 Page 35 of 71

Joint Claim Construction Worksheet U.S. Patent No. 10,829,189

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION CONSTRUCTION CONSTRUCTION (1) Pelican None. Proposed Construction: Proposed Construction: Court’s Construction Proposed Term 1: “an opening from the deck to “well” means “opening” “well” means “opening” “well extending the hull” between the deck “extending between the “extending between the deck portion and the deck portion and the hull portion and the hull portion” does hull portion” portion” does not require not require construction. construction. If the Court Claim 14 finds that construction is required, this limitation 14. A watercraft means “extending between comprising: the deck portion and the hull portion.” rigid body having a deck portion, a hull portion and a well extending between the deck portion and the hull portion,

1 C ase 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1362 Page 36 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION an interface for mounting a propulsion mechanism to the body of the watercraft, the interface including:

a first portion including a first plate positionable adjacent to one of the hull portion and the deck portion of the watercraft, about the periphery of the well, and at least one channel extending from the first plate, the channel being positionable in the well, the channel being sized and shaped for receiving therein a portion of the propulsion mechanism and for mounting the 2 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1363 Page 37 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION propulsion mechanism to the interface; and

at least one fastening assembly for removably fastening the first portion to the body of the watercraft. (2) Pelican None. Proposed Construction: Proposed Construction: Proposed Term 2: “structure projecting from the “channel” means “a hollow “channel” means “a structure “channel first plate into the well to structure defining a defining a passageway” extending from define a passageway, and that passageway through the the first plate…for receives and mechanically interface” “extending from the first plate . . . mounting the supports the propulsion for mounting the propulsion propulsion mechanism” “extending from the first mechanism to the interface” does mechanism to plate” does not require not require construction. the interface” construction. If the Court finds that construction is Claim 14 required, this limitation means “extending from the 14. A watercraft first plate” comprising: “for mounting the rigid body having a propulsion mechanism to deck portion, a hull the interface” does not portion and a well require construction. If the extending between Court finds that 3 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1364 Page 38 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION the deck portion construction is required, and the hull this limitation means “for portion, mounting the propulsion mechanism to the an interface for interface.” mounting a propulsion mechanism to the body of the watercraft, the interface including:

a first portion including a first plate positionable adjacent to one of the hull portion and the deck portion of the watercraft, about the periphery of the well, and at least one channel extending from the first plate, the channel being positionable in the well, the channel being sized and shaped for receiving therein a 4 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1365 Page 39 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION portion of the propulsion mechanism and for mounting the propulsion mechanism to the interface; and at least one fastening assembly for removably fastening the first portion to the body of the watercraft. (3) Pelican None. Proposed Construction: Proposed Construction: Proposed Term 3: “in alignment with” This limitation does not “in registry with” means “in registry “in registry with” require construction. If the with” Court finds that

Claim 15 construction is required, “in registry with” means

15. The watercraft “in registry with.” of claim 14, wherein the interface further comprises a second portion including a second plate positionable adjacent to the other of the hull 5 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1366 Page 40 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION portion and the deck portion of the watercraft, about the periphery of the well, the second plate comprising a hole sized and shaped for receiving therethrough a portion of the propulsion mechanism, the hole being positionable in registry with well and with the channel of the first portion, and wherein the at least one fastening assembly is further configured for removably fastening the second portion of the interface to the body of the watercraft. 6 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1367 Page 41 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION Claim 19

19. The watercraft of claim 16, wherein the at least one fastening assembly is further configured for maintaining the channel of the first portion in registry with the hole of the second portion when the at least one fastening assembly is fastened and the channel is spaced- apart from the second plate.

Claim 20

20. The watercraft of claim 14, further comprising at least one guiding assembly for maintaining the channel of the first 7 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1368 Page 42 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION portion in registry with the hole of the second portion when the at least one fastening assembly is fastened and the channel is spaced- apart from the second plate.

Claim 21

21. The watercraft of claim 20, wherein the at least one guiding assembly comprises a plurality of fins extending upwardly from the second plate of the second portion, about the periphery of the hole, the fins being configured for positioning the channel of the first portion in registry with the hole of the 8 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1369 Page 43 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION second portion as the first and second portions of the interface are forced toward one another. (4) Pelican None. Proposed Construction: Proposed Construction: Proposed Term 4: “mechanism for locking and The “locking mechanism” “lock mechanism” is not a means- “lock mechanism unlocking the propulsion limitations found in the plus-function limitation and, thus, for removably mechanism to the interface asserted claims should be 35 U.S.C. § 112(f) does not apply. securing the that is mechanically supported construed as a 112(f) propulsion by the inner wall of the limitation. “lock mechanism for removably mechanism to the channel of the first portion” securing” means “mechanism for interface, wherein (see definition for “channel” The function recited by locking and unlocking” the lock above)” claim 25 is “for removably mechanism is securing the propulsion “the propulsion mechanism to the mounted in the This term is not governed by mechanism to the interface, wherein the lock channel of the Section 112(f) and should not interface.” The claim also mechanism is mounted in the second portion of be construed as a Section specifies that the channel of the second portion of the interface” 112(f) limitation. corresponding structure is the interface” shall be corrected to “mounted in the channel of “the propulsion mechanism to the Claim 25 This claim term is not the second portion of the interface, wherein the lock indefinite. interface.” Pelican seeks to mechanism is mounted in the first 25. The watercraft construe this to mean portion of the interface.” of claim 14, further If governed by Section 112(f), “mounted in the channel of comprising a lock Pelican contends: the first portion of the “the propulsion mechanism to the mechanism for interface.” interface, wherein the lock removably Claimed function: “for mechanism is mounted in the first securing the removably securing the The structures for portion of the interface” does not propulsion performing the claimed require further construction. 9 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1370 Page 44 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION mechanism to the propulsion mechanism to the function, to the extent any interface, wherein interface.” structure satisfies the the lock requirement that it be mechanism is The corresponding structure clearly linked by the mounted in the includes: specification to the claimed channel of the function are: second portion of An elongated member 1. top funnel slot 446 the interface. pivotably mounted to the 2. lock receiving recess channel, see e.g. lock 450 and 448 generally elongated flat 3. lock 450 consisting of member 452, including as generally elongated flat described in the specification member 452, convex and depicted in the figures, lower end 454, concave including Figure 14. upper end 456, grip elements 458

If the Court concludes this limitation does not invoke Section 112(f), Hobie proposes this limitation means:

“a mechanism mounted in the channel of the second portion of the interface for removably securing the propulsion mechanism to the interface” 10 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1371 Page 45 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION If construed such that the lock mechanism (450) is mounted in the first portion rather than the second portion, as claimed, the claim is indefinite and lacks written description.

Impact on the merits of the case: Adoption of Hobie’s proposed construction would be dispositive as to alleged infringement of claim 25 by the accused Hobie Passport and Lynx products which provide a lock mounted in the channel of the first portion of the interface not in the second portion as claimed. (5) Pelican None. Proposed Construction: Proposed Construction: Proposed Term 5: “a hole of a second portion Claim 20 depends from Correction is not warranted “the hole of the when the at least one claim 14. Claim 14 does because the asserted error is not second portion fastening assembly is fastened not recite antecedent basis obvious. See Novo Indus., L.P. v. when the at least and the channel is spaced- for the claimed hole, Micro Molds Corp., 350 F.3d 1348, one fastening apart from a second plate” second portion or second 1357 (Fed. Cir. 2003) assembly is 11 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1372 Page 46 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION fastened and the plate of claim 20. As such, A ruling of invalidity is not channel is spaced this claim is indefinite. warranted because an artisan of apart from the ordinary skill in the relevant art second plate” This limitation does not would understand what the require construction. If the patentee means by the elements Claim 20 Court finds that lacking antecedent basis. See In re construction is required, Downing, 754 F. App’x 988, 990–91 20. The watercraft “the hole of the second (Fed. Cir. 2018) of claim 14, further portion when the at least comprising at least one fastening assembly is one guiding fastened and the channel is assembly for spaced apart from the maintaining the second plate” means “the channel of the first hole of the second portion portion in registry when the at least one with the hole of the fastening assembly is second portion fastened and the channel is when the at least spaced apart from the one fastening second plate.” assembly is Hobie has proposed a fastened and the construction of the channel is spaced- complete “guiding apart from the assembly” limitation of second plate. claim 20, (see term 10, below) which includes the partial phrase identified by Pelican. (6) Hobie None. Proposed Construction: Proposed Construction: Proposed Term 1: 12 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1373 Page 47 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION “plate” No construction necessary / “plate” means “flat “plate” means “generally flat plain and ordinary meaning. structure” structure” Claim 14 14. A watercraft Pelican objects to the Impact on the merits of comprising: construction of this term in the case: Adoption of rigid body isolation because it is largely Hobie’s proposed having a deck defined by other qualifying construction is case portion, a hull language in the claim itself. dispositive as to the portion and a well accused Mirage Pro Angler extending between To the extent the Court 360 kayak, which does not the deck portion construes this claim term, include a plate, which is a and the hull Pelican believes that this term flat structure. portion, should be construed as an interface for follows: mounting a propulsion “generally flat structure” mechanism to the body of the watercraft, the interface including: a first portion including a first plate positionable adjacent to one of the hull portion and the deck portion of the watercraft, about the periphery of the well, and at least one channel 13 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1374 Page 48 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION extending from the first plate, the channel being positionable in the well, the channel being sized and shaped for receiving therein a portion of the propulsion mechanism and for mounting the propulsion mechanism to the interface; and at least one fastening assembly for removably fastening the first portion to the body of the watercraft.

Claim 15 15. The watercraft of claim 14, wherein the interface further comprises a second portion including a second plate 14 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1375 Page 49 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION positionable adjacent to the other of the hull portion and the deck portion of the watercraft, about the periphery of the well, the second plate comprising a hole sized and shaped for receiving therethrough a portion of the propulsion mechanism, the hole being positionable in registry with well and with the channel of the first portion, and wherein the at least one fastening assembly is further configured for removably fastening the second portion of the interface to the 15 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1376 Page 50 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION body of the watercraft.

Claim 17 17. The watercraft of claim 16, wherein the at least one fastening assembly includes a first segment engaging the first portion of the interface and a second segment engaging the second portion of the interface, the first and second segments of the at least one fastening assembly collaborating to force the first and second portions of the interface toward one another to sandwich the body of the watercraft between the first and second plates. 16 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1377 Page 51 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION

Claim 18 18. The watercraft of claim 17, wherein the first segment of the at least one fastening assembly comprises a threaded fastener engaging the first plate of the first portion and the second segment of the at least one fastening assembly comprises a fastening projection provided with a threaded hole, the threaded fastener being engageable in the threaded hole of the fastening projection to force the first and second portions of the interface toward one another.

Claim 19 17 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1378 Page 52 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION 19. The watercraft of claim 16, wherein the at least one fastening assembly is further configured for maintaining the channel of the first portion in registry with the hole of the second portion when the at least one fastening assembly is fastened and the channel is spaced- apart from the second plate.

Claim 20 20. The watercraft of claim 14, further comprising at least one guiding assembly for maintaining the channel of the first portion in registry with the hole of the second portion 18 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1379 Page 53 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION when the at least one fastening assembly is fastened and the channel is spaced- apart from the second plate.

Claim 21 21. The watercraft of claim 20, wherein the at least one guiding assembly comprises a plurality of fins extending upwardly from the second plate of the second portion, about the periphery of the hole, the fins being configured for positioning the channel of the first portion in registry with the hole of the second portion as the first and second portions of the 19 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1380 Page 54 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION interface are forced toward one another. (7) Hobie None. Proposed Construction: Proposed Construction: Proposed Term 2: No construction necessary / “completely around the “about the periphery” means “about the plain and ordinary meaning. outer recess” “around the edge” periphery” To the extent the Court Impact on the merits of Claim 14 construes this claim term, the case: Adoption of 14. A watercraft Pelican believes that this term Hobie’s proposed comprising: should be construed as construction is case rigid body follows: dispositive as to the having a deck accused Hobie Mirage Pro portion, a hull “along the edge” Angler 360 kayak, which portion and a well does not include the extending between claimed “plate” and does the deck portion not include a “plate” that is and the hull positionable completely portion, around the outer recess of an interface for the well. mounting a propulsion mechanism to the body of the watercraft, the interface including: a first portion including a first plate positionable 20 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1381 Page 55 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION adjacent to one of the hull portion and the deck portion of the watercraft, about the periphery of the well, and at least one channel extending from the first plate, the channel being positionable in the well, the channel being sized and shaped for receiving therein a portion of the propulsion mechanism and for mounting the propulsion mechanism to the interface; and at least one fastening assembly for removably fastening the first portion to the body of the watercraft. 21 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1382 Page 56 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION Claim 15 15. The watercraft of claim 14, wherein the interface further comprises a second portion including a second plate positionable adjacent to the other of the hull portion and the deck portion of the watercraft, about the periphery of the well, the second plate comprising a hole sized and shaped for receiving therethrough a portion of the propulsion mechanism, the hole being positionable in registry with well and with the channel of the first portion, and 22 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1383 Page 57 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION wherein the at least one fastening assembly is further configured for removably fastening the second portion of the interface to the body of the watercraft. (8) Hobie None. Proposed Construction: Proposed Construction: Proposed Term 3: These claim terms do not The “fastening assembly” “fastening assembly . . .” is not a “fastening require construction, and limitations found in the means-plus-function limitation assembly…” therefore, Pelican objects to asserted claims should be and, thus 35 U.S.C. § 112(f) does these constructions. construed as a 112(f) not apply. Claim 14 limitation. 14. A watercraft To the extent the Court “fastening assembly” means comprising: construes these claim terms, The function recited by “fastener” rigid body the plain and ordinary claim 14 is “removably having a deck meaning should apply. fastening the first portion portion, a hull to the body of the portion and a well To the extent the Court finds watercraft.” extending between that the plain and ordinary the deck portion meaning does not apply, The function recited by and the hull Pelican believes that these claim 15 is “removably portion, terms should be construed as fastening the second an interface for such: portion of the interface to mounting a the body of the watercraft.” 23 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1384 Page 58 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION propulsion “fastener(s)” mechanism to the The function recited by body of the Contrary to Hobie’s position, claim 16 is “removably watercraft, the these terms are not governed fastening the first portion interface including: by Section 112(f) and should to the second portion of the a first portion not be construed as Section interface.” including a first 112(f) limitations. plate positionable The structures for adjacent to one of However, if governed by performing these claimed the hull portion and Section 112(f), Pelican functions, to the extent any the deck portion of contends: structure satisfies the the watercraft, requirement that it be about the periphery Claimed function for claim clearly linked by the of the well, and at 14: “removably fastening the specification to the claimed least one channel first portion to the body of the function are: extending from the watercraft.” first plate, the (First embodiment) channel being Claimed function for claim threaded fastener (e.g., positionable in the 15: “removably fastening the 120), oblong hole (e.g., well, the channel second portion of the interface 414) in recess (e.g., 412) of being sized and to the body of the watercraft.” top portion (304), shaped for vertically aligned hole receiving therein a Claimed function for claim (e.g., 118) in abutment wall portion of the 16: “removably fastening the (e.g.114) of the body (e.g., propulsion first portion to the second 12). mechanism and for portion of the mounting the interface.” (Second embodiment) propulsion threaded fasteners (e.g., mechanism to the The corresponding structures 132), threaded bore (e.g., interface; and include: 24 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1385 Page 59 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION at least one 366) of the lower portion fastening assembly Fastening segment(s) (or the fastening projection (332), for removably first and/or second fastening upper portion fastening fastening the first segments), threaded projection (462) having portion to the fastener(s), and/or rivet(s), holes (e.g., 418), hole (e.g., body of the and/or its or their 130) through abutment watercraft. corresponding hole(s), wall (e.g.,128) of the body threaded bore(s) and/or (e.g., 12). In summary, the Claim 15 recess(es). threaded fastener passes 15. The watercraft through (in order): hole of claim 14, See, e.g., ’189 structures: 418, fastening projection wherein the 462, abutment wall hole interface further Fastening Segments 130, threaded bore 366 of comprises a second fastening projection 332 portion including a “fastening segments” / “first (as best shown in Figs. 13 second plate fastening segment” / “second and 21). positionable fastening segment”: adjacent to the The structures for other of the hull “In still another feature, the at performing the claimed portion and the least one fastening assembly function of claim 14 and deck portion of the is configured for removably dependent claims 23, 24 watercraft, about fastening the first portion to and 28 can include either the periphery of the the second portion of the the first or second well, the second interface. Preferably, the at embodiment. The plate comprising a least one fastening assembly structures for performing hole sized and includes a first segment the claimed function of shaped for engaging the first portion of remaining asserted claims receiving the interface and a second must include the structures therethrough a segment engaging the second of both the first and second portion of the portion of the interface. The embodiments. 25 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1386 Page 60 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION propulsion first and second segments of If the Court concludes this mechanism, the the at least one fastening limitation does not invoke hole being assembly collaborate to force Section 112(f), Hobie positionable in the first and second portions proposes: registry with well of the interface toward one and with the another to sandwich the body “fastening assembly” channel of the first of the watercraft between the means “a group of portion, and first and second plates. ” ’189 components used for wherein the at least at 2:45-54 (emphasis added); fastening” one fastening 4:10-19. assembly is “for removably fastening further configured Fastening Projections the first portion to the body for removably of the watercraft” of claim fastening the “fastening projections” (332a- 14 recites a limiting second portion of d): ’189 at 10:6-7; 10:9; functionality requiring the the interface to the 14:40-41; 14:47; 15:26; and claimed fastening assembly body of the 17:34-35. to permit the first portion watercraft. “fastening projections” (462a- of the interface to be d): ’189 at 17:34-35. fastened to the body of the watercraft and also to be Claim 16 Threaded Fasteners unfastened and removed 16. The watercraft from the body of the of claim 15, “threaded fasteners”: watercraft. wherein the at least “In a further feature, the first one fastening segment of the at least one “for removably fastening assembly is fastening assembly comprises the second portion of the configured for a threaded fastener engaging interface to the body of the removably a first plate of the first portion watercraft” of claim 15 fastening the first and the second segment of the recites a limiting portion to the at least one fastening functionality requiring the 26 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1387 Page 61 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION second portion of assembly comprises a claimed fastening assembly the interface. fastening projection provided to permit both the first and with a threaded hole, the second portions of the threaded fastener being interface to be fastened to engageable in the threaded the body of the watercraft hole of the fastening and also to be unfastened projection to force the first and removed from the and second portions of the body of the watercraft. interface toward one another.” Id. at 2:55-62 (emphasis “for removably fastening added); 4:20-27. the first portion to the second portion of the “threaded fasteners” (120a-d): interface” of claim 16 ’189 at FIG. 31; 8:54; 11:40; recites a limiting 15:30; and 17:23. functionality requiring the claimed fastening assembly “threaded fasteners” (132a-d): to permit both the first and ’189 at FIG. 31; 8:67; 10:28; second portions of the 11:49; 11:52; and 15:18. interface to be fastened, unfastened and removed Rivets from the body of the watercraft and the first “other types of fasteners (e.g. portion of the interface to rivets)” ’189 at 15:45-46. be fastened, unfastened and removed from the second Holes portion of the interface.

“hole”/“threaded hole”: ’189 Impact on the merits of at 2:55-62. the case: Adoption of Hobie’s proposed 112(f) 27 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1388 Page 62 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION “holes” (118a-d): ’189 at FIG. construction is case 31; 8:53-54; 15:32-33; and dispositive as to 17:26. infringement by the “holes” (130a-d): ’189 at accused Hobie Passport 8:65-66; 14:50; and 15:20. and Lynx kayaks, which do “holes” (414a-d): ’189 at not include the structures 11:38-39; 15:31; and 17:24. that correspond to the claimed functions or their Threaded Bores equivalents. Adoption of Hobie’s alternative “threaded bores” (366a-d): proposed construction is ’189 at 10:27; 14:49; and also case dispositive as to 15:21. infringement by the accused Passport and Lynx Recesses kayaks if the Court makes clear in its claim “recesses” (146a-d): 9:17-18; construction order that the 15:17; and 15:19-20. alleged interface must be fastened to the body of the “recesses” (412a-d): 11:37; watercraft as claimed and 11:39; 15:31; 15:34; 17:25; described. Construction of and 17:27-28. these limitations, to the extent that it does not result “recesses” (416a-d): 11:44; in non-infringement, will 11:46; and 11:51. establish the invalidity of the asserted claims in view Additionally, Pelican of the prior art and may contends that Hobie’s also impact available statement about “remaining damages remedies. asserted claims” has not put 28 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1389 Page 63 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION Pelican on sufficient notice of what claims its “fastening assembly” limitation constructions apply to. (9) Hobie None. Proposed Construction: Proposed Construction: Proposed Term 4: These claim terms do not “first segment” means “a “first segment,” “second segment,” “first segment,” require construction, and threaded fastener engaging “first and second segments” are “second segment,” therefore, Pelican objects to the first plate of the first construed as having their plain and “first and second the construction of them. portion.” ordinary meaning and, thus, do not segments” require further construction. Pelican further objects to “second segment” means Claim 17 Hobie’s improper grouping of “a fastening projection 17. The watercraft these claim terms which provided on the second of claim 16, previously, were construed by portion with a threaded wherein the at least Hobie separately as individual hole into which the one fastening terms. threaded fastener is assembly includes a engageable.” first segment To the extent the Court engaging the first construes these terms, Pelican Impact on the merits of portion of the believes that these terms the case: Adoption of interface and a should be construed as such: Hobie’s proposed second segment construction is dispositive engaging the First segment: “first part of a as to alleged infringement second portion of fastening assembly” of claims 17 and 18 by the the interface, the accused Mirage Passport first and second Second segment: “second part and Lynx products. These segments of the at of a fastening assembly” products do not include a least one fastening threaded fastener engaging the first plate of the first 29 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1390 Page 64 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION assembly (top) portion. These collaborating products also do not to force the first include a fastening and second portions projection in the second of the interface (bottom) portion or a toward one another fastening projection to sandwich the provided with a threaded body of the hole. watercraft between the first and second plates.

Claim 18 18. The watercraft of claim 17, wherein the first segment of the at least one fastening assembly comprises a threaded fastener engaging the first plate of the first portion and the second segment of the at least one fastening assembly comprises a fastening projection provided with a threaded hole, the 30 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1391 Page 65 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION threaded fastener being engageable in the threaded hole of the fastening projection to force the first and second portions of the interface toward one another. (10) Hobie None. Proposed Construction: Proposed Construction: Proposed Term 5: This claim term does not The applicants acted as The patentee did not act as a “guiding require construction, and lexicographers in defining lexicographer. See Toshiba Corp. v. assembly…” therefore, Pelican objects to the claimed “guiding Imation Corp., 681 F.3d 1358 (Fed. its construction. assembly.” See 12:42-45: Cir. 2012) Claim 20 (“While in the above 20. The watercraft To the extent the Court embodiment the guiding Section 112(f) governs the term of claim 14, further construes this claim terms, the assembly (i.e. the guiding “guiding assembly” comprising at least plain and ordinary meaning fins 334a-334d, the fins one guiding should apply. 354 of the fastening Its function is to maintain the assembly for portions 332a-332d and the channel of the first portion of the maintaining the To the extent the Court finds fins 376 of the female interface in registry with the hole channel of the first that the plain and ordinary portions 334a-334d of the of the second portion of the portion in registry meaning of this term does not directing assembly 336)”); interface when the at least one with the hole of apply, Pelican believes that 15:6-12 (“As such, the fastening assembly is fastened and the second portion the term of claim 20 should be directing assembly 336 and the channel is spaced-apart from when the at least construed as: the guiding fins 334a-334d, the second plate. one fastening the fins 354 of the assembly is fastening portions 332a- Its corresponding structure is the direct assembly 336 and the 31 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1392 Page 66 of 71

guiding fins 3324a–334d, the fins354 of the fastening portions 332a–332d and the fins 376 of the female portions 334a–334d, as shown in Figures 13 and 15–17, and equivalents thereof.

32 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1393 Page 67 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION fastened and the “at least one guiding assembly 332d and the fins 376 of channel is spaced- for maintaining the channel of the female portions 334a- apart from the the first portion in registry 334d define a guiding second plate. with a hole of a second assembly and assist in portion when the at least one properly aligning the top fastening assembly is fastened and bottom portions 302, and the channel is spaced- 304 of the 10 interface 300 apart from a second plate.” during their assembly with the body 12 of the kayak Contrary to Hobie’s assertion, 10.”) this term is not governed by Section 112(f) and should not The claimed guiding be construed as a Section assembly 336 includes 112(f) limitation. male portion (390) and female portion (334). See If governed by Section 112(f), 14:64-15:6 (“To properly Pelican contends: position the lower end 403 of the channel 402 in Claimed function: alignment with the “maintaining the channel of elongated hole 312 of the the first portion in registry lower portion 302, a male with the hole of the second portions 390a-390d of the portion when the at least one guide assembly 336 fastening assembly is fastened gradually engages female and the channel is spaced- portions 334a-334d of the apart from the second plate.” directing assembly 336, while the bottom end 403 Described examples of these of the channel 402 corresponding structures gradually engages the include: inclined edges 358, 380, 32 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1394 Page 68 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION 394, and then the vertical “one or more fins and/or edges 356, 378, 392 of the directing assemblies such as guiding fins 334a-334d, the with male and female fins 354 of the fastening portions.” portions 332a-332d, the fins 376 of the female “Fins” to be construed as portions 334a-334d.”) “flattened projections.” See Pelican’s 4.1 Preliminary As such, each claimed Proposed Construction. “guiding assembly” should be construed to include: See also: 1. Guiding assembly (also referred to as “directing “In one feature, the interface assembly”) (e.g., 336); further comprises at least one 2. Guiding assembly guiding assembly for female portion (e.g., maintain the channel of the 334) having a first portion in registry with cylindrical hole (e.g., the hole of the second portion 384); when the at least one 3. Guide assembly male fastening assembly is fastened portion (e.g., 390); and the channel is spaced- 4. Guiding assembly fin apart from the second plate. (e.g., 376); Preferably, the at least one 5. Guiding fin (e.g., 338 guiding assembly comprises also referred to as 334); a plurality of fins extending 6. Fastening portion fin upwardly from the second (e.g., 354). plate of the second portion, about the periphery of the Pelican appears to contend hole, the fins being the named inventors did 33 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1395 Page 69 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION configured or positioning the not act as their own channel do the first portion in lexicographers. As such, registry with the hole of the and if the Court agrees second portion as the first and with Pelican’s position, second portions of the “guiding assembly for interface are force toward one maintaining the channel of another.” ’189 at 3:3-14 the first portion in registry (emphasis added). with the hole of the second portion when the at least “Together, the guiding fins one fastening assembly is 334a-334d, the fins 354 of the fastened and the channel is fastening portions 332a, 332d spaced-apart from the and the fins 376 of the female second plate” should be portions 334a 334d of the construed as a 112(f) directing assembly 336 limitation. collaborate to guide the positioning of the top portion Claimed function: 304 of the interface 300 “maintaining the channel relative to the bottom portion of the first portion in 302 during 5 the assembly of registry with the hole of the the interface 300.” Id. at 11:1- second portion when the at 6 (emphasis added). least one fastening assembly is fastened and “While in the above the channel is spaced-apart embodiment the guiding from the second plate.” assembly (i.e. the guiding fins 334a-334d, the fins 354 The structures for of the fastening portions performing these claimed 332a-332d and the fins 376 functions, to the extent any of the female portions 334a- structure satisfies the 34 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1396 Page 70 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION 334d of the directing requirement that it be assembly 336) are provided clearly linked by the on the bottom plate 302 of the specification to the claimed interface 300.” Id. at 12:42-46 function are: (emphasis added). 1. Guiding assembly (also referred to as “directing assembly”) (e.g., 336); 2. Guiding assembly female portion (e.g., 334) having a cylindrical hole (e.g., 384); 3. Guide assembly male portion (e.g., 390); 4. Guiding assembly fin (e.g., 376); 5. Guiding fin (e.g., 338 also referred to as 334); 6. Fastening portion fin (e.g., 354).

Impact on the merits of the case: Adoption by the Court of either construction proposed by Hobie would be dispositive as to alleged infringement of claims 20, 21 and 22 by accused Hobie Passport and Lynx products as neither includes 35 Case 3:20-cv-02390-BAS-MSB Document 77 Filed 02/01/22 PageID.1397 Page 71 of 71

PATENT CLAIM AGREED PELICAN PROPOSED HOBIE PROPOSED COURT’S CONSTRUCTION PROPOSED CONSTRUCTION1 CONSTRUCTION CONSTRUCTION the claimed “guiding assembly.”