WearForce Pty Ltd v. Talon Engineering, SDN BHD

• Court: District Court, D. Nevada
• Decided: June 21, 2022
• Docket: 3:21-cv-00284
• Status: Unknown

Opinion

3 UNITED STATES DISTRICT COURT

4 DISTRICT OF NEVADA

5 * * *

6 WEARFORCE PTY LTD, Case No. 3:21-cv-00284-MMD-CSD

7 Plaintiff and Counter Defendant, CLAIM CONSTRUCTION ORDER v. 8 TALON ENGINEERING, SDN BHD, 9 Defendant and Counter Claimant. 10 11 I. SUMMARY 12 Plaintiff and Counter Defendant WearForce Pty Ltd alleges that Defendant and 13 Counter Claimant Talon Engineering, SDN BHD infringes U.S. Reissued Patent No. 14 RE47,477 (the “’477 Patent”) (ECF No. 1-1)1 in this patent case because Talon imports 15 and sells allegedly infringing LOCKJAW shroud assemblies for the buckets of loaders and 16 other earthmoving machinery. (ECF No. 1.) This Order addresses the disputed claim terms 17 the parties presented for the Court to construe. 18 II. BACKGROUND 19 As noted, WearForce accuses Talon’s LOCKJAW G.E.T. product of infringing 20 Claims 25-29, 32, and 35-43 of the ’477 Patent. (ECF No. 45 at 8.) The Court incorporates 21 by reference the photographs that WearForce included in its opening brief as helpful to 22 the extent they illustrate the technology at issue and provide some background regarding 23 the art pertinent to the ’477 Patent. (Id. at 6-8.) 24 The Court held a claim construction hearing on June 8, 2022. (ECF No. 50 25 (“Hearing”); see also ECF No. 51 (Hearing transcript).) At the Hearing, the parties’ counsel 26 27 1The ’477 Patent reissued from U.S. Patent No. 8,776,408. (ECF No. 1 at 4.) 28 1 presented technical tutorials and argument on the four disputed claim terms also 2 discussed below. (Id.) 3 III. LEGAL STANDARD 4 Patent claim construction is a question of law for the Court. See Markman v. 5 Westview Instruments, Inc., 517 U.S. 370, 372 (1996). When interpreting claims, a court’s 6 primary focus should be on the intrinsic evidence of record, which consists of the claims, 7 the specification, and the prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 8 1314-17 (Fed. Cir. 2005) (en banc). The Court should begin by examining the claim 9 language. See id. at 1312. Claim language should be viewed through the lens of a person 10 of “ordinary skill in the relevant art at the time of the invention.” SanDisk Corp. v. Memorex 11 Prods., Inc., 415 F.3d 1278, 1283 (Fed. Cir. 2005) (citations omitted). If the claim language 12 is clear on its face, then consideration of the other intrinsic evidence is limited “to 13 determining if a deviation from the clear language of the claims is specified.” Interactive 14 Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). 15 A court should give the claim’s words their “ordinary and customary meaning.” 16 Phillips, 415 F.3d at 1312-13 (quotation omitted). In construing a claim term’s ordinary 17 meaning, the context in which a term is used must be considered. See ACTV, Inc. v. Walt 18 Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003). Both asserted and unasserted claims 19 of the patent also can add meaning to a disputed claim term as claim terms normally are 20 used consistently throughout the patent. See Phillips, 415 F.3d at 1314. 21 “[C]laims must be read in view of the specification, of which they are a part.” Id. at 22 1315 (quotation omitted). The specification can offer “practically incontrovertible directions 23 about a claim meaning.” Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 24 2009). “When consulting the specification to clarify the meaning of claim terms, courts 25 must take care not to import limitations into the claims from the specification.” Id. 26 “[A]lthough the specification may well indicate that certain embodiments are preferred, 27 particular embodiments appearing in the specification will not be read into claims when 28 the claim language is broader than such embodiments.” Tate Access Floors, Inc. v. 1 Maxcess Techns., Inc., 222 F.3d 958, 966 (Fed. Cir. 2000) (quotation omitted). “By the 2 same token, the claims cannot enlarge what is patented beyond what the inventor has 3 described in the invention.” Abbott Labs., 566 F.3d at 1288 (internal quotation omitted). 4 “Likewise, inventors and applicants may intentionally disclaim, or disavow, subject matter 5 that would otherwise fall within the scope of the claim.” Id. 6 In addition to the specification, a court should consider the patent’s prosecution 7 history, which consists of “the complete record of the proceedings before the PTO and 8 includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317. 9 However, because the prosecution represents an “ongoing negotiation” rather than the 10 “final product” of the negotiation, “it often lacks the clarity of the specification and thus is 11 less useful for claim construction purposes.” Id. Consulting the prosecution history can, 12 however, be helpful in determining whether the patentee disclaimed an interpretation 13 during prosecution. See Research Plastics, Inc. v. Federal Packaging Corp., 421 F.3d 14 1290, 1296 (Fed. Cir. 2005). “Under the doctrine of prosecution disclaimer, a patentee 15 may limit the meaning of a claim term by making a clear and unmistakable disavowal of 16 scope during prosecution.” Purdue Pharma L.P. v. Endo Pharm. Inc., 438 F.3d 1123, 1136 17 (Fed. Cir. 2006). 18 If the claim language is not clear after reviewing all intrinsic evidence, then the Court 19 may refer to extrinsic evidence such as expert testimony, inventor testimony, dictionaries, 20 and learned treatises. See Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 21 1414 (Fed. Cir. 2000). 22 IV. DISCUSSION 23 The parties have narrowed2 the contested claim terms to four terms in the claims 24 of the ’477 Patent. (ECF Nos. 44-1 at 3-11, 45 at 16-31, 46 at 12-35.) Summaries of their 25 proposed constructions of each disputed term as stated in the Joint Claim Construction 26 and Prehearing Statement (ECF No. 44-1 at 3-11) are presented in comparison charts 27 2The parties agree on the construction of six claim terms. (ECF Nos. 44-1 at 2, 45 28 1 || below. The Court will address each of the disputed terms below after each of the 2 || comparison charts. 3 A. “locking means” (claim 25) 4 WearForce’s Proposed Construction Talon’s Proposed Construction 5 35 U.S.C. § 112(f) applies 35 U.S.C. § 112(f) applies 6 Function: “engage the boss to Function: “engage the boss to releasably secure the shroud with releasably secure the shroud with 7 respect to the wear edge when the respect to the wear edge when the locking means is in a_ locked locking means is in a locked 8 position” position” 9 structure: “a locking device and a structure: “locking device 51, helix 10 compressible member, wherein the 61, flat section 67, and locking device is _ rotatably compressible member 53” 11 supported in the shroud, the locking device being in the form of a 12 cylinder, the cylinder having a 13 sidewall which incorporates at least one helix, the at least one helix 14 projecting from at least a portion of the sidewall, wherein the 15 compressible member has each of a first face and a second face, and 16 wherein a portion of an external 17 surface of the helix has at least one engaging section adapted to 18 directly engage the second face of the compressible member and 19 || | equivalents thereof” 20 The parties agree about much of the construction of this term. As WearForce 21 || phrases it, the parties’ primary dispute as to this term is whether “flat section 67’ shown 22 || in the specification on helix 61 is a required element of the claim construction for ‘locking 23 || means.” (ECF No. 45 at 17.) WearForce argues it is not. (/d.) However, WearForce also 24 || argues in reply (ECF No. 47 at 4-6) that Talon tried to change its proposed construction in 25 || its responsive claim construction brief, characterizing “the key dispute” as “whether ‘flat 26 || section 67 or recess 179’ should be included in the structure of ‘locking means[.]” (ECF 27 || No. 46 at 12-13.) Said otherwise, Talon changed its proposed construction from arguing 28 || that the locking means must have a ‘flat section 67’ as part of its structure in the Joint

1 Claim Construction and Prehearing Statement to arguing that the locking means must 2 have either ‘flat section 67 or recess 179’ in its responsive claim construction brief.3 (Id.) 3 WearForce accordingly argues that Talon’s attempt to change its proposed 4 construction violates LPR 1-16. (ECF No. 47 at 4-6.) LPR 1-16 requires a showing of good 5 cause to change claim construction positions submitted in the Joint Claim Construction 6 and Prehearing Statement. (Id.) WearForce also argues Talon cannot show good cause 7 under LPR 1-16 as further defined in LPR 1-12 because allowing Talon to change its 8 position in response to WearForce’s opening brief prejudices WearForce, as it would 9 essentially force WearForce to start the claim construction process over again. (Id.) 10 The Court asked the parties to address this argument at the Hearing.Talon argued 11 that it did not change its position from the Joint Claim Construction and Prehearing 12 Statement to its responsive claim construction brief because 35 U.S.C. § 112 ¶ 6 provides 13 that a means plus function claim must “be construed to cover the corresponding structure, 14 material, or acts described in the specification and equivalents thereof.” Id. Because ‘flat 15 section 67’ and ‘recess 179’ are equivalent, Talon argues that it impliedly included ‘recess 16 179’ when it included ‘flat section 67’ in its proposed construction of ‘locking means’ and 17 ‘locking mechanism.’ Moreover, Talon’s counsel referred to a declaration he filed with 18 Talon’s responsive claim construction brief describing how Talon has consistently taken 19 this position throughout the case, and particularly pointing out how he called WearForce’s 20 counsel on April 14, 2022 to explain that Talon’s position included both ‘flat section 67’ 21 and ‘recess 179.’ (ECF No. 46-1 at 2.) Thus, Talon’s counsel argued at the Hearing that 22 Talon did not change its position and WearForce was not prejudiced in any event. 23 WearForce’s counsel maintained the argument raised in its reply brief at the 24 Hearing that the Court should adopt its proposed claim constructions because the fact that 25 Talon changed its proposed constructions means Talon conceded they were wrong; and 26

27 3Talon attempts to make the same change as to ‘locking mechanism.’ (ECF No. 46 at 18.) This discussion as to ‘locking means’ accordingly applies to ‘locking mechanism’ 28 1 the Court should not consider Talon’s expert’s declaration at all because it advances the 2 claim construction positions Talon has since rejected—meaning it is unreliable—on top of 3 the law providing that the Court should not consider expert delcarations at claim 4 construction unless the intrinsic evidence is unclear. (ECF No. 47 at 4-6.) While the Court 5 agrees with WearForce that Talon violated LPR 1-16, the Court is ultimately persuaded 6 by Talon’s argument on this issue. 7 And as further explained below, Talon is right on the statute, but wrong on LPR 1- 8 16. The District’s Local Patent Rules “seek to balance the right to develop new information 9 in discovery with the need for certainty as to the legal theories.” Silver State Intell. Techs., 10 Inc. v. Garmin Int’l, Inc., 32 F. Supp. 3d 1155, 1162 (D. Nev. 2014) (citation omitted). This 11 need for certainty suggests that the Court should read the rules literally, as not allowing 12 for implicit equivalents. Moreover, LPR 1-16 is clear: “Deviations from the claim 13 construction positions submitted in the Joint Claim Construction and Prehearing 14 Statement will be permitted only upon a showing of good cause.” Id. This too, suggests 15 that Talon should have written the proposed construction it insists it meant to all along in 16 the Joint Claim Construction and Prehearing Statement. The best reading of ‘deviation’ in 17 this context is any change in the words on the page—the rule does not appear to have an 18 implicit exception for equivalents. The Court accordingly finds that Talon violated LPR 1- 19 16. 20 However, the Court will waive LPR 1-16 in this instance and thus excuse Talon’s 21 violation of it. See LR IA 1-4 (“The court may sua sponte or on motion change, dispense 22 with, or waive any of these rules if the interests of justice so require.”). The interests of 23 justice support this waiver here because there is no real dispute that WearForce was 24 aware Talon meant its proposed constructions of this term and ‘locking mechanism’ to 25 include ‘recess 179’ as of April 14, 2022. (ECF No. 46-1.) Moreover, Talon is correct on 26 the law—the corresponding structure of a means plus function claim implicitly includes 27 equivalents. See 35 U.S.C. § 112 ¶ 6. Thus, WearForce both was aware—and should 28 have been aware—that Talon’s proposed construction for this term and ‘locking 1 mechanism’ included ‘recess 179.’ WearForce accordingly was not prejudiced by Talon’s 2 arguable change in position. 3 That brings the Court to the substance of the parties’ dispute: must the 4 corresponding structure of ‘locking means’ include either ‘flat section 67’ or ‘recess 179?’ 5 And the Court agrees with Talon that it must. 6 To further elaborate on the substance of the parties’ arguments, WearForce argues 7 its claim construction position is supported by the prosecution history (ECF No. 45 at 17- 8 19), that Talon’s proposed construction excludes disclosed embodiments (id. at 19-20),4 9 and Talon’s proposed construction is wrong because the flat section is described as an 10 optional feature in the specification (id. at 20-21). WearForce concludes its argument by 11 requesting the Court adopts its construction including “and equivalents thereof.” (Id. at 21.) 12 Talon counters, supported by the testimony of its expert Roelof H. deVries, that its 13 proposed construction is correct because the invention embodied in the ’477 Patent would 14 not function properly if there is not a flat surface or recess on the helix within the locking 15 means. (ECF No. 46 at 13-17.) Talon further argues that WearForce’s argument based on 16 the ’477 Patent’s prosecution history is both incorrect and irrelevant. (Id. at 17-18.) Talon 17 finally requests that the Court’s construction of this term not conclude with “and 18 equivalents thereof” because it is superfluous and may confuse the jury. (Id. at 18.) 19 Overall, the Court agrees with Talon as to this disputed term. 20 The first problem with WearForce’s argument is that it starts with the prosecution 21 history instead of the claim language. (ECF No. 45 at 17-19.) See Phillips, 415 F.3d at 22 1312 (explaining that the claims themselves are of primary importance in claim 23 construction). And when it comes to the actual claim language, the parties agree that part 24 of the function performed by ‘locking means’ is releasably securing the shroud. This 25

26 4This argument is rendered moot by the Court’s decision to waive Talon’s LPR 1- 16 violation because WearForce’s argument is that one preferred embodiment described 27 in the patent includes ‘recess 179.’ (ECF No. 45 at 19-20.) And the Court treats Talon’s proposed construction as including either ‘flat section 67’ or ‘recess 179.’ For this reason, 28 1 ‘releasably’ concept is a key concept in claim 25. (ECF No. 1-1 at 17.) But WearForce’s 2 proposed construction does not capture it in the way ‘releasably’ is used in the context of 3 the ’477 Patent. Indeed, at the Hearing, Wearforce’s counsel essentially argued that the 4 shroud could releasably lock to the wear edge by virtue of being fully cranked down until 5 the locking device could not rotate any more. While that may well be the case, that is not 6 how the invention described in the ‘477 Patent works. 7 To the contrary, and as Talon argues (ECF No. 46 at 13-17), claim 25 contemplates 8 a locked position that can only be achieved when either ‘flat section 67’ or ‘recess 179’ 9 engage the compressible member. (ECF No. 1-1 at 17.) And as there are two 10 embodiments described in the specification, this releasable engagement can happen— 11 depending on the embodiment—using either ‘flat section 67’ or ‘recess 179.’ As to the first 12 embodiment, “the flat section 67 on the external face 73 of the helix 61 aligns with and 13 engages the second face 71 of the compressible member 53.” (Id. at 15.) As to the second 14 embodiment, “a second face 171 is shaped to complement the shape of the recess 179 15 such that when the recess 179 aligns with the second face 171 the locking device 51 is 16 releasably locked with respect to the compressible member 53.” (Id.) But without either 17 ‘flat section 67’ or ‘recess 179,’ the locking means could not releasably secure the shroud 18 to the wear edge. WearForce’s argument as to this disputed term is accordingly 19 unpersuasive because it finds support in neither claim 25 nor the specification. 20 The Court similarly rejects WearForce’s argument that Talon’s proposed 21 construction is wrong because the flat section is described as an optional feature in the 22 specification because the Court reads that portion of the specification as simply making 23 room for the second embodiment described in the specification. (ECF No. 45 at 20-21.) 24 Indeed, even the same portion of the specification that WearForce excerpts in support of 25 this argument supports this view. (Id. at 20.) Generally the cam like surface has a portion 26 that engages the compressible member: it can either be complimentary in shape with the 27 surface of the compressible member or flat. (See id.; see also ECF No. 1-1 at 14 (the 28 same text in the patent).) That aligns with Talon’s view that the locking means depends 1 || on either ‘flat section 67’ or ‘recess 179,’ not with WearForce’s view that somehow either 2 || of those components are optional. 3 Finally, the Court agrees with Talon that it is unnecessary to include the phrase 4 || ‘and equivalents thereof at the end of the construction of ‘locking means.’ (ECF No. 46 at 5 || 18.) As a means plus function term, ‘locking means’ already covers equivalents of its 6 || corresponding structure. The Court accordingly does not need to say so twice by adopting 7 || WearForce’s proposed addition to its construction of ‘locking means.’ See, e.g., Odetics, 8 || Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1266-67 (Fed. Cir. 1999) (explaining that a 9 || means plus function claim limitation is subject to the requirements of 35 U.S.C. § □□□□□□ 10 || and, “[a]s such, the limitation must be construed ‘to cover the corresponding structure, 11 || material, or acts described in the specification and equivalents thereof.”’). 12 In sum, the Court rejects WearForce’s proposed construction for this term and 13 || instead adopts Talon’s as clarified in its responsive brief. ‘Locking means’ is a means plus 14 || function claim subject to 35 U.S.C. § 112(f). Its function is to “engage the boss to 15 || releasably secure the shroud with respect to the wear edge when the locking means is in 16 || a locked position[.]” Its corresponding structure is locking device 51, helix 61, flat section 17 || 67 or recess 179, and compressible member 53. Said otherwise, the locking means has 18 || a four-part structure, as Talon argues, and not a three-part structure, as WearForce 19 || argues. 20 B. “locking mechanism” (claims 35, 37, 38) 21 29 35 U.S.C. § 112(f) does not apply 35 U.S.C. § 112(f) applies

relative to the attachment 24 mechanism” 25 structure: “locking device 51, helix 26 61, flat section 67, and compressible member 53” 27 28

1 As noted, WearForce argues that Talon changed its proposed construction in its 2 responsive brief as to this term as well. (ECF No. 47 at 4-6.) To describe the change as 3 WearForce does, while Talon initially argued the structure of ‘locking mechanism’ must 4 include “flat section 67[,]” (ECF No. 44-1 at 7), Talon now argues it must include “either 5 flat section 67 or recess 179” (ECF No. 46 at 18). But as also noted above, the Court’s 6 discussion regarding LPR 1-16 as to ‘locking means’ also applies to ‘locking mechanism.’ 7 Talon’s proposed construction as to ‘locking mechanism’ accordingly includes “locking 8 device 51, helix 61, flat section 67 or recess 179, and compressible member 53[.]” (Id.) 9 On the substance of the parties’ arguments as to this term, while WearForce argues 10 this is not a means plus function term because it does not include the phrase means and 11 other terms within the patent do (ECF No. 45 at 21), Talon counters that its unrebutted 12 expert testimony establishes that this is a means plus function term. (ECF No. 46 at 18- 13 19.) WearForce replies that Talon does not contend “locking device” is a means plus 14 function term because it has a defined structure, so the key question before the Court is 15 whether “locking mechanism” means the same thing as “locking device,” as WearForce 16 contends it does. (ECF No. 47 at 6-10.) 17 On that point, Talon argues that the two terms cannot mean the same thing 18 because they both appear in the same claim. (ECF No. 46 at 29.) WearForce effectively 19 counters that they can because, in the context of the intrinsic evidence, ‘locking 20 mechanism’ means only the rotating device 51 and not the whole locking assembly 19. 21 (ECF No. 47 at 7-8.) WearForce further argues that the prosecution history compels the 22 same result. (Id. at 8-9.) WearForce then argues that the caselaw Talon relies on is 23 distinguishable and that Talon advances an inconsistent claim construction by arguing this 24 is a means plus function term because Talon does not argue many other, similar terms 25 that appear in the ’477 Patent are means plus function terms. (Id. at 8-10.) But the Court 26 agrees with Talon. 27 ‘Locking mechanism’ cannot mean the same thing as ‘locking device.’ There are 28 three primary reasons for this. First, the presumption is to the contrary. See Helmsderfer 1 v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008) (“Our precedent 2 instructs that different claim terms are presumed to have different meanings.”). Second, 3 the patent in suit uses both ‘locking mechanism’ and ‘locking device’ in the same claim. 4 (ECF No. 1-1 at 18.) Third, ‘locking mechanism’ and ‘locking device’ in claim 35 refer to 5 different things. (Id.) The ‘locking mechanism’ is written in claim 35 to include the ‘locking 6 device’ and the ‘attachment mechanism.’ (Id.) Said otherwise, the ‘locking device’ is a 7 component of the ‘locking mechanism.’ (Id.) Thus, the two terms cannot mean the same 8 thing. The Court accordingly rejects WearForce’s primary argument that they are. 9 The Court also agrees with Talon that ‘locking mechanism’ is a mean plus function 10 claim even though it does not use the term ‘means.’ See, e.g., Williamson v. Citrix Online, 11 LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (“failure to use the word ‘means’ also creates 12 a rebuttable presumption—this time that § 112, para. 6 does not apply.”) (citation omitted). 13 The Court again focuses on the intrinsic evidence, especially the language within the 14 claims. What is the locking mechanism in claim 35? It is, as Talon argues, a ‘mechanism 15 for locking the shroud relative to the attachment mechanism.’ (ECF No. 46 at 18.) That 16 function is right in the claim. (ECF No. 1-1 at 18.) And as written, that function means 17 something very close to a ‘means for locking’ because of the use of the word ‘for.’ Said 18 otherwise, what is the ‘locking mechanism?’ A mechanism for locking. It is defined in claim 19 35 as a function of what it does, suggesting it is indeed a means plus function claim. 20 What’s more—and as Talon also argues—the United States Court of Appeals for the 21 Federal Circuit has recognized that ‘mechanism’ is a ‘nonce’ word that may substitute for 22 ‘means’ in a means plus function claim term. See MTD Prod. Inc. v. Iancu, 933 F.3d 1336, 23 1341 (Fed. Cir. 2019). Indeed, it serves that function in claim 35. In sum, the Court agrees 24 with Talon that ‘locking mechanism’ is a means plus function claim. 25 And as to the structure corresponding to the function, Talon proffers the same 26 corresponding structure that it does for ‘locking means’—a four part system consisting of 27 “locking device 51, helix 61, compressible member 53, and either flat section 67 or recess 28 179[.]” (ECF No. 46 at 18.) The Court agrees that this is the corresponding structure for 1 || locking mechanism. (ECF No. 1-1 at 15 (consistently describing this four part system as 2 || to both preferred embodiments in the patent in suit).) 3 Moreover, it follows that both ‘locking means’ and ‘locking mechanism’ are means 4 || plus function claims with the same structure because the two terms play equivalent roles 5 || in claims 25 and 35—the independent claims in which they feature. To start, both terms 6 || are situated at the beginning of a claim limitation, denoting that they are the overall system 7 || described in that limitation. (/d. at 17-18 (“a locking means including...” (claim 25) and (“a 8 || locking mechanism for locking...”) (claim 35)).) And in the case of both claim 25 and claim 9 || 35, they appear to mean something similar—a system consisting of a locking device and 10 || either a compressible member (in claim 25) or an attachment mechanism (in claim 35) 11 || that attaches a shroud assembly to a wear edge. 12 Relatedly, and as Talon also points out (ECF No. 46 at 21-22), ‘locking mechanism’ 13 || does not appear in the specification of the patent in suit—only the claims. And indeed, the 14 || closest thing to ‘locking mechanism’ described in the specification is ‘locking means,’ 15 || further supporting the Court’s view that the two means plus function claims have the same 16 || corresponding structure. 17 In sum, the Court need not—and does not—go beyond the inner layers of the 18 || intrinsic evidence (the claims and the specification) to conclude that Talon’s proposed 19 || construction for ‘locking mechanism’ is the correct one. The Court finds that ‘locking 20 || mechanism’ is a means plus function claim whose function is “locking the shroud relative 21 || to the attachment mechanism[,]” and whose corresponding structure is ‘locking device 51, 22 || helix 61, either flat section 67 or recess 179, and compressible member 53.’ 23 C. “locking device” (claims 25, 29, 32, 35, 40)

* member, rotatably supported in advances into a shroud 6 the shroud, that co-operates with the boss to lock the shroud relative 27 to the wear edge” 28 12

1 WearForce’s proposed construction of this term is narrower, and, indeed, much of 2 WearForce’s argument is that Talon’s proposed construction is too broad because it would 3 encompass any ordinary bolt or screw. (ECF No. 45 at 28-29.) WearForce argues such a 4 broad construction is not supported by the prosecution history, which distinguishes the 5 invention embodied in the ’477 Patent over prior devices that used a mere bolt or screw. 6 (Id. at 28-30.) Talon counters that its proposed construction is correct because the sole 7 purpose of the locking device as described in the patent is to be rotationally advanced into 8 the shroud. (ECF No. 46 at 29-30.) WearForce replies that the specification also explains 9 that the locking device “works with the boss to lock the shroud relative to the wear edge”— 10 so Talon’s proposed construction is incorrect. (ECF No. 47 at 15.) WearForce otherwise 11 reitereates that the prosecution history supports its proposed construction. (Id. at 15-16.) 12 The Court agrees with WearForce. 13 Talon’s proposed construction is too broad. But to start, WearForce’s proposed 14 construction is supported by the intrinsic evidence, most notably the claim language itself. 15 For example, within claim 25, the locking device is described as both rotatably supported 16 in the shroud and as something that engages the boss to retain the shroud in position 17 relative to the wear edge. (ECF No. 1-1 at 17.) Similarly, the locking device is described 18 in claim 35 as cooperating with the attachment mechanism to lock the shroud relative to 19 the wear edge. (Id. at 18.) Further, the locking device is described in the specification as 20 “adapted to be rotatably received in an aperture 55” (ECF No. 1-1 at 15) and is otherwise 21 described in the introduction as “adapted to engage the compressible member to retain 22 the shroud in position relative to the wear edge” (id. at 13). 23 Indeed, and as WearForce argues in reply (ECF No. 47 at 15), WearForce’s 24 proposed construction aligns with the description of the locking device provided in the 25 specification of the ’477 Patent. The locking device works with the boss to lock the shroud 26 relative to the wear edge. (ECF No. 1-1 at 15.) Conversely, Talon’s proposed construction 27 does not capture how the locking device cooperates with the boss to lock the shroud 28 relative to the wear edge. Talon’s proposed construction merely specifies that the locking 1 || device rotationally advances into a shroud. (ECF No. 46 at 29-30.) The Court accordingly 2 || rejects Talon’s proposed construction as not supported by the pertinent claims and 3 || specification of the ’477 Patent. 4 In addition, the Court also agrees with WearForce that the prosecution history does 5 || not support Talon’s proposed construction that would cover a bolt or screw. (ECF No. 47 6 || at 15-16.) Indeed, the prospective patentee specifically distinguished the bolt disclosed in 7 || the Maher prior art reference in arguing that the invention eventually reflected in the ’477 8 || Patent was patentable. (ECF No. 45-2 at 145-147.) Thus, the patentee cannot have been 9 || attempting to claim a bolt. And Talon’s proposed construction would include a bolt because 10 || a bolt can rotationally advance into a shroud assuming there is some sort of apature or 11 || hole in the shroud. Thus, the prosecution history does not support Talon’s proposed 12 || construction either. 13 In sum, the Court adopts WearForce’s proposed construction as to this term. 14 || ‘Locking device’ means ‘a lock including a locking member, rotatably supported in the 15 || shroud, that co-operates with the boss to lock the shroud relative to the wear edge.’ 16 D. “compressible member” (claims 25, 27-29)

: by the locking device when the deforms when pressure is applied 49 locking device is in the locked by the helix of the locking device” position” 20 21 The key dispute as to this term is whether the compressible member must 22 || elastically deform, as Talon argues. WearForce argues, “the concept of elastic 23 || deformation does not appear anywhere in the patent specification or the prosecution 24 || history and unnecessarily complicates the plain language of the claims.” (ECF No. 45 at 25 || 31.) Thus, WearForce argues, it makes “zero sense’ to import this limitation into the claim 26 || language. (/d.) And WearForce further argues that the Court should not consider Talon’s 27 || expert declaration because the intrinsic evidence is unambiguous so it is accordingly 28 14

1 improper to consider extrinstic evidence such as the declaration at this stage. (Id. at 31- 2 32.) 3 Talon counters that the specification shows that the ‘compressible member’ 4 changes shape from a ‘compressed’ to an ‘uncompressed’ shape so it must elastically 5 deform. (ECF No. 46 at 32-34.) Talon further argues that Mr. deVries’s unrebutted expert 6 testimony supports its proposed construction. (Id. at 34-35.) WearForce replies in pertinent 7 part that Talon’s argument illustrates why the Federal Circuit has warned against the use 8 of extrinsic evidence—such as expert testimony—in claim construction. (ECF No. 47 at 9 17-18.) Undue reliance on extrinsic evidence creates a risk that the Court will change the 10 meaning of claims “in derogation of the ‘indisputable public records consisting of the 11 claims, the specification and the prosecution history,’ thereby undermining the public 12 notice function of patents.” (Id. at 18 (quoting Phillips, 415 F.3d at 1318-19).) Overall, the 13 Court agrees with WearForce as to this term. 14 “[T]he words of a claim ‘are generally given their ordinary and customary meaning.”’ 15 Phillips, 415 F.3d at 1312. But the ordinary and customary meaning of compressible is not 16 ‘elastically deforms.’ It is simpler, and more in line with WearForce’s proposed 17 construction. Moreover, the specification of the ’477 Patent at least twice describes the 18 ‘compressible member’ as something that is ‘caused to compress.’ (ECF No. 1-1 at 14 19 (“the compressible member is caused to compress”), 15 (“causes the compressible 20 material 75 to compress”).) Further, the specification of the ’477 Patent describes the 21 ‘compressible member’ as “compressed (or approaching this condition)” when the locking 22 device is in a locked position. (Id. at 15.) Thus, the specification of the ’477 Patent also 23 supports WearForce’s proposed construction. 24 In contrast, but as WearForce also argues (ECF No. 47 at 16), the concept of elastic 25 deformation does not appear anywhere in the ’477 Patent. Thus, Talon’s proposed 26 construction lacks support from the ’477 Patent itself. Moreover, Talon—and Talon’s 27 counsel at the Hearing—tried to draw a distinction between elastic and plastic deformation, 28 arguing that the compressible member is subject to elastic, but not plastic, deformation. 1 || However, the ordinary and customary meaning of ‘compressible’ would encompass both 2 || plastic and elastic deformation. Indeed, ‘compressible’ is equivalent to ‘compressed’— 3 || though the former describes possibility and the latter describes a state of compression. 4 || Thus, Talon’s proposed construction does not align with with the ordinary and customary 5 || meaning of ‘compressible,’ while WearForce’s proposed construction does. 6 Finally, the Court also agrees with WearForce that it does not need Mr. deVries’ 7 || expert testimony to construe this term. (ECF No. 47 at 17-18.) Indeed, relying on his 8 || testimony to construe ‘compressible member more narrowly than provided by the 9 || customary meaning of the term “poses the risk that [his expert testimony] will be used to 10 || change the meaning of claims in derogation of the ‘indisputable public records consisting 11 || of the claims, the specification and the prosecution history,’ thereby undermining the public 12 || notice function of patents.” Phillips, 415 F.3d at 1319 (citation omitted). 13 In sum, the Court adopts WearForce’s proposed construction of this term and 14 || rejects Talon’s. In the '477 Patent, ‘compressible member’ means ‘a component that is 15 || compressed by the locking device when the locking device is in the locked position.’ 16 || V. CONCLUSION 17 The Court notes that the parties made several arguments and cited to several cases 18 || not discussed above. The Court has reviewed these arguments and cases and determines 19 || that they do not warrant discussion as they do not affect the outcome of this claim 20 || construction. 21 It is therefore ordered the claim terms in the '477 Patent discussed herein have the 22 || meaning the Court assigned them herein for purposes of this litigation. 23 DATED THIS 21* Day of June 2022.

25 MIRANDA M. DU 26 CHIEF UNITED STATES DISTRICT JUDGE 27 28 16