Wirtgen America, Inc. v. Caterpillar, Inc.

CourtDistrict Court, D. Delaware
DecidedMarch 10, 2023
Docket1:17-cv-00770
StatusUnknown

This text of Wirtgen America, Inc. v. Caterpillar, Inc. (Wirtgen America, Inc. v. Caterpillar, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Wirtgen America, Inc. v. Caterpillar, Inc., (D. Del. 2023).

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

WIRTGEN AMERICA, INC., Case No. 1:17-cv-00770-JDW-MPT ,

v.

CATERPILLAR, INC.,

.

MEMORANDUM Wirtgen America Inc. sued Caterpillar Inc., alleging that Caterpillar infringed thirteen of Wirtgen’s patents. Caterpillar countersued, alleging that Wirtgen infringed three of its patents. All the patents relate to machines used in road construction and repair. The Parties have presented disputes over the meaning of twelve disputed claim terms stemming from the following seven patents: (1) U.S. Patent No. 7,946,788 (‘788 Patent); (2) U.S. Patent No. 8,511,932 (‘932 Patent); (3) U.S. Patent No. 8,690,474 (‘474 Patent); (4) U.S. Patent No. RE48,268 (‘268 Patent); (5) U.S. Patent No. 7,523,995 (‘995 Patent); (6) U.S. Patent No. 9,975,538 (‘538 Patent); and (7) U.S. Patent No. 9,371,618 (‘618 Patent). I held a hearing January 24-25, 2023, and now resolve the disputed constructions. I. LEGAL STANDARD A. General Principles of Claim Construction “It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” , 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quote omitted). Claim construction is a matter of law. , 574 U.S. 318, 325 (2015). “[T]here is no magic formula

or catechism” for construing a patent claim, nor is a court “barred from considering any particular sources or required to analyze sources in any specific sequence[.]” , 415 F.3d at 1324. Instead, a court is free to attach the appropriate weight to appropriate

sources “in light of the statutes and policies that inform patent law.” (citation omitted). A court generally gives the words of a claim “their ordinary and customary meaning,” which is the “meaning that the term would have to a person of ordinary skill in the art at the time of the invention, i.e., as of the effective filing date of the patent

application.” at 1312-13 (quotations omitted). Usually, a court first considers the claim language; then the remaining intrinsic evidence; and finally, the extrinsic evidence in limited circumstances. , 256 F.3d 1323, 1331-32 (Fed. Cir. 2001). While “the claims themselves provide substantial guidance as to

the meaning of particular claim terms[,]” a court also must consider the context of the surrounding words. 415 F.3d at 1314. In addition, the patent specification “is always highly relevant to the claim construction analysis and indeed is often the single

best guide to the meaning of a disputed term.” , 19 F.4th 1325, 1330 (Fed. Cir. 2021) (quotation omitted). But, while a court must construe claims to be consistent with the specification, the court must “avoid the danger of reading limitations from the specification into the claim ….” 415 F.3d at 1323. This is a “fine” distinction. 156 F.3d 1182, 1186-87 (Fed. Cir. 1998). In addition, “even when the specification describes only a single

embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’” , 755 F.3d 1367,

1372 (Fed. Cir. 2014) (quotation omitted) (cleaned up). A court may refer to extrinsic evidence only if the disputed term’s ordinary and accustomed meaning cannot be discerned from the intrinsic evidence. , 90 F.3d 1576, 1584 (Fed. Cir. 1996). Although a court may not use

extrinsic evidence to vary or contradict the claim language, extrinsic materials “may be helpful to explain scientific principles, the meaning of technical terms, and terms of art that appear in the patent and prosecution history.” 52 F.3d 967, 980 (Fed. Cir. 1995). Extrinsic evidence is used “to ensure that the court’s

understanding of the technical aspects of the patent is consistent with that of a person of skill in the art[.]” 415 F.3d at 1318. The Federal Circuit has cautioned against relying upon expert reports and testimony that is generated for the purpose of litigation

because of the likelihood of bias. ; 509 U.S. 579, 595 (1993) (“Expert evidence can be both powerful and quite misleading because of the difficulty in evaluating it.”) (quotation omitted). Ultimately, “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be . . . the correct

construction.” , 158 F.3d 1243, 1250 (Fed. Cir. 1998). B. Construction of Means-Plus-Function Limitations

When construing claim terms, a court must consider whether they are “mean-plus- function” limitations. 35 U.S.C. § 112(f) governs the interpretation of means-plus-function claim terms: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof 35 U.S.C. § 112(f). For patents that predate the America Invents Act, the same standard applies under former 35 U.S.C. § 112, ¶ 6. To determine whether Section 112, ¶ 6 governs a claim, the “essential inquiry” is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” , 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc).1 If a claim term does not use

the word “means,” there is a rebuttable presumption that means-plus-function claiming under Section 112, ¶6 does not apply. , 792 F.3d at 1349. To rebut it, a

1 An Federal Circuit joined the portion of the decision discussing the applicability of Section 112. , 892 F.3d at 1347-49 & n.3. challenger must demonstrate that a claim term either fails to “recite sufficiently definite structure” or recites “function without reciting sufficient structure for performing that

function.” at 1349. “The ultimate question is whether the claim language, read in light of the specification, recites sufficiently definite structure to avoid [Section] 112, ¶ 6.” , 933 F.3d 1336, 1341 (Fed. Cir. 2019) (quote omitted).

Courts use a two-step process to construe means-plus-function limitations. First, the court must determine the claimed function. , 208 F.3d 1352, 1361 (Fed. Cir. 2000). Second, the court must identify the corresponding structure that the specification discloses to perform that function.

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