ALAN WANER,
Plaintiff,
v.
FORD MOTOR COMPANY,
Defendant.
Thomas G. Fritz, Robert Gusinsky
Lynn, Jackson, Shultz & LeBrun, Rapid City, SD
Attorneys for Plaintiffs.
Patricia A. Meyers, Costello, Porter, Hill, Heisterkamp &
Bushnell, LLP, Rapid City, SD
Ernie L. Brooks, Thomas A. Lewry, Michael S. Brodbine,
Sangeeta G. Shah, Brooks & Kushman, PC, Southfield, MI
Daniel M. Stock, General Counsel, Ford Global Technologies, Inc., Dearborn, MI
Attorneys for Defendants.
Karen E. Schreier, United States District Judge
[¶1] Plaintiff Alan Waner, owner of US Patent No. 5,613,710, brings a patent infringement claim against defendant Ford Motor Company. A Markman hearing was held on August 3, 2000. The parties presented evidence and argument on claims 1 and 4 of the `710 patent.
[¶2] The '710 patent, entitled "Dual Rear Wheel Fender Liner," was issued March 25, 1997, to plaintiff. The '710 patent relates to a fender liner for a dual-wheel fender that is strategically located in the fender to guard against star cracking of the paint on the fender.
[¶3] Determination of infringement is a two-step analytic procedure, beginning with claim construction, in which the claims are first construed by the court "as a matter of law, and then are applied to the accused device, a question of fact." Wang Labs., Inc. v. America Online, Inc., 197 F 3d 1377, 1380, 53 USPQ2d 1161 (Fed. Cir. 1999) (citing EMI Group North America, Inc. v. Intel Corp., 157 F3d 887, 891, 48 USPQ2d 1181, 1184 (Fed. Cir. 1998)).
[¶4] In construing the claims, the court must first consider the intrinsic evidence, including the claims themselves, the patent specification (also referred to as the written description), and the prosecution history of the patent. Digital Biometrics, Inc. v. Identix, Inc., 149 F3d 1335, 1344, 47 USPQ2d 1418 (Fed. Cir. 1998); Markman v. Westview Instruments, Inc., 52 F3d 967, 979, 34 USPQ2d 1321 (Fed. Cir. 1995), aff'd, 517 US 370, 116 SCt 1384, 134 LEd 2d 577, 38 USPQ2d 1461 (1996). The actual words of the claim are controlling, the specification is secondary, and the prosecution history is tertiary. See Digital Biometrics, Inc., 149 F3d at 1344.
[¶5] Claim construction begins with the language of the claims, which defines the breadth and depth and bounds of the claims. York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F3d 1568, 1572, 40 USPQ2d 1619 (Fed. Cir. 1996). The general rule is that terms are to be given their ordinary and accustomed meaning unless it is apparent that the inventor intended to use them differently. Johnson Worldwide Assoc., Inc. v. Zebco Corp., 175 F3d 985, 989, 50 USPQ2d 1607 (Fed. Cir. 1999); National Recovery Tech., Inc. v. Magnetic Separation Sys., Inc., 166 F3d 1190, 49 USPQ2d 1671 (Fed. Cir. 1999).
[¶6] Two general rules of claim construction result in presumptions regarding claim breadth. The first is that a claim should be interpreted so as to preserve its validity. See Modine Mfg. Co. v. United States Int'l Trade Comm'n, 75 F3d 1545, 37 USPQ2d 1609 (Fed. Cir. 1996). However, this presumption does not allow the court to engage in the wholesale rewriting of claims. See Rhine v. Casio, Inc., 183 F3d 1342, 51 USPQ2d 1377 (Fed. Cir. 1999). The second presumption is that if a claim is subject to two viable alternative interpretations, the narrower one should apply. See Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F3d 1573, 37 USPQ2d 1365 (Fed. Cir. 1996). This rule has been explained as a penalty for unclear drafting, as well as a reasonable "tiebreaker" when viewed from the perspective of public policy. Id.
[¶7] If claim language is not dispositive, the court considers the specification of the '710 patent to determine if "the inventor has used any terms in a manner inconsistent with their ordinary meaning." Vitronics Corp. v. Conceptronic, Inc., 90 F3d 1576, 39 USPQ2d 1573 (Fed. Cir. 1996). The court "may look to the written description to define a term already in a claim limitation, for a claim must be read in view of the specification of which it is a part." Renishaw PLC v. Marposs Societa' per Azioni, 158 F3d 1243, 1248, 48 USPQ2d 1117 (Fed. Cir. 1998); Markman, 52 F3d at 979. "However, the resulting claim interpretation must, in the end, accord with the words chosen by the patentee to stake out the boundary of the claimed property." Renishaw, 158 F3d at 1248; Intervet America, Inc. v. Kee-Vet Labs., Inc., 887 F2d 1050, 1053, 12 USPQ2d 1474 (Fed. Cir. 1989) ("Limitations appearing in the specification will not [normally] be read into claims ... [i]nterpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.") "[T]he specification is always highly relevant to the claim construction analysis" and "must be clear and complete enough to enable those of ordinary skill in the art to make and use [the invention]." Id. The specification is the "single best guide to the meaning of a disputed term," and it is frequently dispositive. Id.
[¶8] Finally, the court should also consider the patent's prosecution history in construing the claims. Spectrum Int'l, Inc. v. Sterilite Corp., 164 F3d 1372, 1378, 49 USPQ2d 1065 (Fed. Cir. 1998). "The prosecution history gives insight into what the applicant originally claimed as the invention, and often what the applicant gave up in order to meet the Examiner's objection." Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F3d 973, 977, 52 USPQ2d 1109 (Fed. Cir. 1999) (quoting Lemelson v. General Mills, Inc., 968 F2d 1202, 1206, 23 USPQ2d 1284, 1288 (Fed. Cir. 1992)). It also "limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during the prosecution in order to obtain claim allowance." Elkay Mfg., 192 F3d at 977 (quoting J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F3d 1563, 1565, 41 USPQ2d 1641, 1642 (Fed. Cir. 1997)). The prosecution history cannot be used, however, to enlarge, diminish, or vary the limitations in the claims. Markman, 52 F3d at 980.
[¶9] In construing the claim, the court may also consider extrinsic evidence such as expert and inventor testimony, dictionaries, learned treatises, and prior art not cited in the prosecution history. Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F3d 1408, 1414, 54 USPQ2d 1141 (Fed. Cir. 2000). Extrinsic evidence should be considered only "when the intrinsic evidence is insufficient to establish the clear meaning of the asserted claim." Id.
[¶10] The claims at issue, with the disputed terms underlined and letters (fn1) inserted to correspond with the joint claim statement, are as follows:
Claim 1:
A fender liner for a dual wheel fender, said fender formed of epoxy-fiberglass and having a substantially flat top, an inboard and an outboard side, said fender mounted on angled brackets along the top of the fender on the inboard side of the fender to a rear quarter panel of a vehicle with bolts through the angled brackets, said fender liner comprising
an elongated flat panel made of sheet material with [d] an inboard side flange, said flat panel [e] running substantially the length and breadth of the flat top, and suited to be installed inside the fender along the flat top,
said fender liner [f] adapted to be attached to the angled brackets along the inboard side flange of the fender liner [g] by the bolts attaching the fender to the vehicle along the top of the fender,
whereby the underside of the flat top of the fender is guarded against damage by rocks and other objects which may be hurled up against the flat top of the fender.
Claim 4:
A fender liner for a dual wheel fender, said fender formed of epoxy-fiberglass and having a substantially flat top, an inboard and an outboard side, said fender mounted on angled brackets along the top of the fender on the inboard side of the fender to a rear quarter panel of a vehicle with bolts through the angled brackets, said fender liner comprising
an elongated flat panel made of sheet material with an inboard side flange and an outboard side flange running the length of the panel, said flat panel running substantially the length and breadth of the flat top and suited to be installed inside the fender along the flat top,
said fender liner adapted to be attached to the angled brackets along the inboard side flange of the fender liner by the bolts attaching the fender to the vehicle along the top of the fender
said outboard side flange angled downwardly a short distance and suited to be installed inside the fender along the outboard side of the fender
whereby the underside of the flat top of the fender is guarded against damage by rocks and other objects which may be hurled up against the flat top of the fender.
[¶11] Claims 1 and 4 are identical except that claim 4 adds the pertinent language "and an outboard side flange running the length of the panel" and "outboard side flange angled downwardly a short distance." Although the parties agree that the terms common to claims 1 and 4 are to be given the same interpretation in each claim, separate claims are presumed to indicate that the claims have different meanings and scope. Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F3d 968, 971-72, 50 USPQ2d 1465 (Fed. Cir. 1999).
CONSTRUCTION OF CLAIM 1
[¶12] The first phrase requiring interpretation is "an inboard side flange," labeled [d] in the joint claim construction statement. Defendant asks the court to construe the '710 patent to require an inboard side flange and contends that the court should interpret "flange" to mean one surface of an object at a distinct angle to another surface since the patent gives no special meaning to the word "flange." Defendant argues that the liner must have a large flat panel bordered by at least one distinct flange and that the flange must be present in the liner before installation on the fender. Defendant indicates that the large flat panel (36) and the flanges (40 and 46) are clearly shown in Figures 1 and 2 of the patent and that the specification, in column 3, lines 1-2 and 9-13, confirms the description of the flanges. In addition, defendant suggests that the specification indicates that "the inboard side flange 'is preferably in about a 5-degree angle to the plane within which flat panel 36 lies' and that the outward side flange is 'angled downwardly a short distance along outboard side 22 of fender 16, most preferably at an angle of about 35 degrees to the plane of the flat panel [36].'" Brief in Support of Defendant's Proposed Claim Construction, p. 12.
[¶13] Plaintiff acknowledges that claims 1 and 4 of the patent literally require an inboard side flange. However, plaintiff asks the court to construe the '710 patent so as to not require that a flange exist prior to installation of the liner, arguing that the liner is "adapted to be attached" to a fender and not used alone. Plaintiff contends that the flange may be formed upon installation. In addition, plaintiff urges the court to give "flange" its ordinary and customary meaning.
[¶14] The court must begin with the language of the claim itself. See Johnson Worldwide, 175 F3d at 989. There is a "heavy presumption" that courts "give full effect to the ordinary and accustomed meaning of claim terms" except where a different meaning is clearly set forth in the specification or where the accustomed meaning would deprive the claim of clarity. Id. at 989-90; Renishaw PLC v. Marposs Societa per Azioni, 158 F3d 1243, 1249 (Fed. Cir. 1998). Furthermore, "a technical term used in a patent is interpreted as having the meaning that it would be given by persons experienced in the field of the invention, unless it is apparent from the patent and the prosecution history that the inventor used the term with a different meaning." Toro v. White Consol. Indus., Inc., 199 F3d 1295, 53 USPQ2d 1065 (Fed. Cir. 1999) (quoting Hoechst Celanese Corp. v. BP Chem, Ltd., 78 F3d 1575, 1578, 38 USPQ2d 1126 (Fed. Cir. 1996)). However, a patentee can act as his own lexicographer to specifically define terms of a claim contrary to their ordinary meaning if the written description clearly redefines a claim term "so as to put a reasonable competitor or one reasonably skilled in the art on notice that the patentee intended to so redefine that claim term." Process Control Corp. v. HydReclaim Corp., 190 F3d 1350, 1357, 52 USPQ2d 1029 (Fed. Cir. 1999). Absent an express intent to impart a novel meaning, claim terms take on their ordinary meaning. See Renishaw PLC v. Marposs Societa' per Azioni, 158 F3d 1243, 1249, 48 USPQ2d 1117(Fed. Cir.1998).
[¶15] The day after the Markman hearing, defendant forwarded the Toro case to the court, indicating it was in response to plaintiff's "new reliance on dictionary definitions for the word 'flange.'" The Toro court indicates that in patent claim construction, dictionaries are "less useful" and that "[d]etermining the limits of a patent claim requires understanding its terms in the context in which they were used by the inventor, considered by the examiner, and understood in the field of the invention." Toro, 199 F3d at 1299. Numerous Federal Circuit Court of Appeals cases decided after the Toro decision, however, reaffirm that claim terms receive their ordinary and customary meaning unless the patentee assigns a special meaning. See Optical Disc. Corp. v. Del Mar Avionics, 208 F3d 1324, 1334, 54 USPQ2d 1289 (Fed. Cir. 2000); Cortland Line Co. v. Orvis Co., 203 F3d 1351, 1356 (Fed. Cir. 2000); Eisenberg v. Alimed, Inc., 2000 WL 1119743 (Fed. Cir 2000); Schering Corp. v. Amgen Inc., 2000 WL 1055975, 55 USPQ2d 1650 (Fed. Cir. 2000); Tate Access Floors, Inc. v. Maxcess Tech., Inc., 2000 WL 1055981, 55 USPQ2d 1513 (Fed. Cir. 2000); Northern Telecom Ltd. v. Samsung Elecs. Co., 215 F3d 1281, 55 USPQ2d 1065 (Fed. Cir. 2000); American Imaging Servs., Inc. v. Intergraph Corp., 2000 WL 772725 (Fed. Cir. 2000); IMS Tech., Inc. v. Haas Automation, Inc., 206 F3d 1422, 54 USPQ2d 1129 (Fed. Cir. 2000); Stairmaster Sports/Medical Prods., Inc. v. Groupe Procycle, Inc., 2000 WL 286066 (Fed. Cir. 2000); Mitek Surgical Products, Inc. v. Arthrex, Inc., 2000 WL 217637 (Fed. Cir. 2000). In several cases, the court specifically relies on Webster's dictionary definition in claim construction. See Optical, 208 F3d at 1335; (quoting Vitonics Corp. v. Conceptronic, Inc., 90 F3d 1576, 1582, 39 USPQ2d 1573, 1576 (Fed. Cir. 1996). ("Although ... dictionaries fall within the category of extrinsic evidence, as they do not form a part of an integrated patent document, they are worthy of special note. Judges ... may . . . rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents."); Cortland, 203 F3d at 1356. Few cases limit the court to giving claim terms their ordinary and accustomed meaning "as understood by one of ordinary skill in the art." See Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 2000 WL 1035753, 55 USPQ2d 1487 (Fed. Cir. 2000); Elekta Instr. S.A. v. O.U.R. Scientific Int'l, Inc., 214 F3d 1302, 54 USPQ2d 1910 (Fed. Cir. 2000).
[¶16] At the hearing, the parties presented extrinsic evidence regarding the meaning of "flange." Dr. Alan McDonald testified as an expert on behalf of plaintiff. Dr. McDonald has a Ph.D. degree in mechanical engineering, is a registered Professional Engineer, and taught undergraduate courses in the field of mechanical engineering at Purdue University from 1967 through 1999. Dr. McDonald testified that a flange "is the portion of a structure to either stiffen or attach it to another structure, not necessarily requiring angles." Plaintiff also introduced the following definitions of "flange": "[A] rib or rim for strength, for guiding, or for attachment to another object." Merriam-Webster's Collegiate Online Dictionary. "A projecting rim or edge of a part, usually narrow and of approximately constant width for stiffening or fastening." Industrial Engineering Terminology (revised 1989). "A projecting flat rim, collar, or rib, used to strengthen an object, to guide it, to keep it in place, to facilitate its attachment to another object, or for other purposes." The Oxford English Dictionary.
[¶17] David Jeshurun testified on behalf of defendant. Mr. Jeshurun has masters degrees in business administration and science and mechanical engineering, and has been employed by defendant since 1978 in various positions, such as a body engineering launch leader, body structures supervisor, pre-program design supervisor, value engineering team leader, product design engineer, product change analyst, and product development engineer. Mr. Jeshurun testified that a flange is a surface angled at a distinct angle with a flat surface, that it has a "definite change in the surface" at the edge of the panel, that it has a "consistent height," and has a "clearly identifiable" crease or break-line.
[¶18] Neither party argued that "flange" is a technical term. Neither the patent, the specification, nor the prosecution history indicate that "an inboard side flange" should be given anything other than its ordinary meaning. Therefore, the court finds that the intrinsic evidence is insufficient to establish clear meaning of the asserted claim and will consider the extrinsic evidence presented. In addition, the court assumes that in proffering the Toro case, defendant would argue that the court must give the term its ordinary meaning "as understood by one of ordinary skill in the art." At the hearing, Dr. McDonald testified that although he had more than ordinary skill in the art, his testimony would be from the viewpoint of one of ordinary skill in the art. In his opinion, a flange is the portion of a structure to either stiffen or attach it to another structure, not necessarily requiring angles. The dictionary definitions admitted into evidence, including the Industrial Engineering Terminology definition which the court also finds is from the viewpoint of one of ordinary skill in the art, support Dr. McDonald's definition. Mr. Jeshurun's definition, although considered from the viewpoint of one of ordinary skill in the art, is not supported by any additional evidence offered by defendant, nor is it consistent with any other evidence presented. After considering the evidence presented at the Markman hearing, the patent document in conjunction with the patent specification and the prosecution history, the court finds that "flange," given its ordinary meaning, means the portion of a structure to either stiffen or attach it to another structure, not requiring the five-degree angle as described in the preferred embodiment, and not necessarily requiring any angles. In addition, the court finds that nothing in the claim, the specification, or the prosecution history requires that the flange exist prior to installation of the liner. In claim 4 the liner clearly must be considered after installation (see discussion below), which is another indication that in construing claim 1 the flange need only exist after installation.
[¶19] The parties also disagree regarding the meaning of the word "inboard." No evidence was presented on the definition of "inboard" at the Markman hearing. The court finds that the intrinsic evidence is insufficient to establish clear meaning of the asserted claim and will consider extrinsic evidence. Therefore, the court finds that "inboard" means "toward the center line of a vehicle." Merriam-Webster's Collegiate Dictionary 586 (10th ed. 1999).
[¶20] The second phrase, labeled as [e], requiring interpretation is "running substantially the length and breadth of the flat top and suited to be installed inside the fender along the flat top." Defendant contends that this phrase is a limitation placed upon the liner so that the liner, as patented, only covers and protects the top of the fender. Defendant indicates that plaintiff made it clear in the specification that front and rear liners are undesirable for plaintiff's purposes and suggests that the court's claim construction must so reflect.
[¶21] Plaintiff contends that the liner is suited to be installed inside the fender along the flat top, but need not be limited thereto and that the claim should not be narrowed by defendant's suggested limitation. The court agrees, finding no such limitation in the claim itself.
[¶22] The third phrase, labeled as [f], requiring interpretation is "adapted to be attached to the angled brackets." Defendant argues that it is critical that prior to installation, the liner must have some type of adaptations, such as dimples, for attachment to angled brackets and that the adaptations must be present before installation of the liner in a fender.
[¶23] Plaintiff argues that defendant is lifting a specific detailed component of the preferred embodiment, "dimples," and improperly inserting it into the broad claims 1 and 4. Plaintiff contends that there is a factual dispute, not a legal dispute, as to whether Ford's liner is adapted to be attached to the angled brackets. Dr. McDonald testified that "adapted to be attached" means the liner is designed to be adapted to the fender and that no additional physical structures are required. Defendant argues that "adapted to be attached to the angled brackets" must be construed to require a formed adaptation on the liner itself to accommodate the brackets, such as the dimples. Neither party offered a definition of "adapted" without utilizing "adapt," "adapted" or "adaptation." Furthermore, "adapted" has not been specifically defined by plaintiff in the patent, nor do the specification or prosecution history establish clear meaning of "adapted." Therefore, the court will consider extrinsic evidence and assign "adapted" its ordinary meaning which is "to make fit, often by modification." Merriam-Webster's Collegiate Dictionary 13 (10th ed.1999).
[¶24] In addition, the court finds that claims 1 and 4 do not require "dimples" as the method for adaptation for attachment as suggested in the preferred embodiment and in claim 6. The claims of a patent are not "limited by preferred embodiments." CVI/Beta Ventures v. Tura LP, 112 F3d 1146, 1158, 42 USPQ2d 1577 (Fed. Cir. 1997), cert. denied, 522 US 1109, 118 SCt 1039, 140 LEd 2d 105 (1998). Moreover, "[t]hat claims are interpreted in light of the specification does not mean that everything expressed in the specification must be read into all the claims." Raytheon Co. v. Roper Corp., 724 F2d 951, 957, 220 USPQ 592 (Fed. Cir. 1983). On the contrary, the specification must be sufficiently explicit and complete to enable one skilled in the art to practice the invention, while a claim defines only that which the patentee regards as his invention. Environmental Designs, Ltd. v. Union Oil Co. of California, 713 F2d 693, 699, 218 USPQ 865 (Fed. Cir. 1983). See also 35 USC. § 112. The claim, not the specification, measures the invention. Id. Furthermore, the doctrine of claim differentiation also supports a construction of "adapted to be attached to the angled brackets" that is not limited to the ribs or "dimples" as described in claim 6 and in the preferred embodiment. "This doctrine, based on the common sense notion that different words or phrases used in separate claims are presumed to indicate that the claims have different meaning and scope." Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F3d 968 (Fed. Cir. 1999) (citing Comark Comm., Inc. v. Harris Corp., 156 F3d 1182, 1187, 48 USPQ2d 1001, 1005 (Fed. Cir. 1998)).
[¶25] The fourth phrase, labeled as [g], requiring interpretation is "by the bolts attaching the fender to the vehicle along the top of the fender." Defendant urges the court to construe this phrase to mean that the same bolts that attach the top of the fender to the truck must be used to attach the liner to the fender.
[¶26] Plaintiff argues that he does not claim the bolts and that the fender liner must only be adapted to be attached by the bolts. Plaintiff indicates that defendant is seeking to add a limitation that is not present in the claim. The court finds that the liner must only be adapted to be attached by the bolts.
CONSTRUCTION OF CLAIM 4
[¶27] Claims 1 and 4 are identical except that claim 4 adds the pertinent language "and an outboard side flange running the length of the panel" and "outboard side flange angled downwardly a short distance." The parties agree that the terms common to claims 1 and 4 are to be given the same interpretation in each claim. Therefore, the court will only construe the remaining phrase, labeled [i].
[¶28] The additional phrase in claim 4 requiring interpretation, labeled as [i], is "outboard side flange angled downwardly a short distance." Plaintiff contends that there is a factual dispute as to whether Ford's liner has the claimed flange, but that it is a factual issue of infringement. Defendant argues that prior to installation, the liner must have an outboard side flange that is angled from the body of the liner.
[¶29] The court finds that "flange" will be given the same meaning as was given to it in claim 1, that is "the portion of a structure to either stiffen or attach it to another structure," not requiring the five-degree angle as described in the preferred embodiment, and not necessarily requiring any angles. Claim 4 specifically includes the language "angled downwardly," however, and therefore, the court finds that the flange must exhibit some downward angle. Prior to installation it is impossible to determine whether the angle of the flange is upward or downward. Therefore, the court finds that the downward angle is required only after installation of the liner.
PROSECUTION HISTORY
[¶30] The remaining piece of evidence to consider is the prosecution history. Amhil Enterprises Ltd. v. Wawa, Inc., 81 F3d 1554, 1559-60, 38 USPQ2d 1471 (Fed. Cir. 1996). "Although the prosecution history can and should be used to understand the language used in the claims, it too cannot 'enlarge, diminish, or vary' the limitations in the claims." Markman, 52 F3d at 980 (quoting Goodyear Dental Vulcanite Co. v. Davis, 102 US 222, 227, 26 LEd 149 (1880); Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F2d 1050, 1054 (Fed. Cir. 1989). "[T]he prosecution history or file wrapper limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed during prosecution in order to obtain claim allowance." J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F3d 1563, 1565, 41 USPQ2d 1641, 1642 (Fed. Cir. 1997). "Claims may not be construed one way in order to obtain their allowance and in a different way against accused infringers." Spectrum Int'l, Inc. v. Sterilite Corp., 164 F3d at 1378 (quoting Southwall Techs. Inc. v. Cardinal IG Co., 54 F3d 1570, 1576, 34 USPQ2d 1673 (Fed. Cir. 1995)). Defendant asserts that the prosecution history of the patent shows that Waner limited his claims to an uninstalled liner. Plaintiff contends that his invention is only the fender liner, but that it does not mean that the flanges cannot be formed upon installation.
[¶31] A review of the prosecution history of the '710 patent reveals that the US Patent and Trademark Office initially rejected claims 1 through 10 of plaintiff's first application for a patent as being indefinite for failing to particularly point out and distinctly claim the subject matter which plaintiff regarded as the invention. Specifically, in claims 1 and 4, the claims at issue, the examiner found the scope of the claim to be confusing as to whether the combination of the fender and fender liner or subcombination fender liner was intended. To overcome this rejection, plaintiff clarified that it is the fender liner, not the liner and fender that is his invention.
[¶32] Plaintiff also amended claims 1 and 4 to include "mounted on angled brackets along the top of the fender on the inboard side of the fender to a rear quarter panel of" and "through the angled brackets ... ." Plaintiff also changed the phrase "making attachment" to "mounted ... to a rear quarter panel of a vehicle." The amendments added to the invention the mounting of the liner to the angled brackets. Plaintiff distinguished his liner from the Fuchs and Whitton patents cited by the examiner by indicating that neither the Fuchs nor Whitton patents attached with angled brackets and neither attached outside of the normal wheel well. This clarification resulted in the allowance of the claims. Furthermore, because plaintiff inserted the language "mounted on angle brackets" and "mounted ... to a rear quarter panel," it is clear that the fender must be mounted, thus the flange need only exist after installation. Therefore, the court finds that the liner must attach to the angled brackets of the fender and that the fender must be viewed after installation.
[¶33] Based upon the claims, the specification language and the prosecution history, the Waner patent is construed as follows with regard to claims 1 and 4:
1. The patent is not limited to the liners as it appears uninstalled.
2. The patent does not require a flange to be formed prior to installation of the liner.
3. The patent does not require that the flange form a five-degree angle when installed.
4. The patent does not limit the fender liner to the flat top of the fender.
5. The patent does not require, prior to installation, some type of adaption such as dimples.
6. The patent does not require that the liner be attached by the same bolts that attach the top of the fender to the truck.
7. The patent does require that the liner be adapted to be attached by the bolts.
8. The patent does require the fender liner to be attached to the angled brackets.
[¶34] The patent is construed as follows with regard to claim 4:
1. The patent does require that the outboard side flange must exhibit some downward angle, but the angle is required only after installation of the liner.
[¶35] The court determines this as a matter of law. This ruling is binding on subsequent proceedings in this lawsuit consistent with the holding in Markman, 517 US at 370. Accordingly, it is hereby
[¶36] ORDERED that expert depositions must be completed on or before September 29, 2000.
[¶37] IT IS FURTHER ORDERED that any summary judgment motion must be filed on or before October 27, 2000.
[¶38] IT IS FURTHER ORDERED that the non-moving party to the summary judgment motion shall respond on or before November 24, 2000.
[¶39] IT IS FURTHER ORDERED that any reply must be filed on or before December 4, 2000.
Footnotes
1. Letters [a] through [c] are omitted per defendant's decision to no longer seek an interpretation of terms in the preamble. See Brief in Support of Defendant's Proposed Claim Construction, page 4, note 1.
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