
    C.M.L. s.r.l., v. INECO INDUSTRIAL NAVARRA DE EQUIPOS Y COMERCIO, S.A., et al.
    No. CIV.A. WMN-96-2814.
    United States District Court, D. Maryland.
    Nov. 26, 2001.
    
      Douglas V. Rigler, Andrews and Kurth LLP, Washington, DC, for plaintiff.
    Robert J. Mathias, John Caleb Dougherty, Piper Marbury Rudnick and Wolfe LLP, Baltimore, MD, for defendants.
   MEMORANDUM

NICKERSON, District Judge.

Plaintiff C.M.L. s.r.l. (“C.M.L.”) claims, inter alia, that Defendants Ineco Industrial Navarra de Equipos y Comercio, S.A., and its United States distributor, Advanced Fabricating Machinery (hereinafter referred to collectively as “Ineco”), have wilfully infringed U.S. Patents Nos. 5,345,-802 (“the ’802 patent”) and 5,469,728 (“the ’728 patent”). The issue now before the Court involves the construction of certain claims within the patents. A Mark-man hearing was held on September 27, 2001, and the parties have submitted proposed conclusions of law as to the construction of the disputed terms. After consideration of the parties’ positions as argued at the hearing and presented in their pleadings, the Court finds as follows:

I. BACKGROUND

The claims of the ’802 and ’728 patents relate generally to a countermatrix for use in pipe bending machines. The counter-matrix is the portion of the machine that holds the pipe against the machine’s matrix, which rotates while the pipe is pulled through and bends the pipe in the process. The disputed claims in the patents describe the shape of the groove in the coun-termatrix.

The ’802 patent contains two claims, but only Claim 1 is asserted by C.M.L. to be infringed. The ’728 patent contains five claims, and C.M.L. asserts that Ineco has infringed all five claims. Claim 1 of the ’802 patent provides as follows:

Claim 1. A shaped groove countermatrix for a rotary groove pulley matrix and a countermatrix head pipe bending machine, comprising:
a groove (10) having an exit edge (18), a semicircular cross-sectional tract with a curved surface, and an end tract (2) aligned in a direction of feed of a pipe to be bent in the groove (1) during a bending operation;
said end tract (2) being tapered, according to substantially elliptic profiles (20), both longitudinally and transversely with respect to the semicircular cross-sectional tract;
said end tract (2) further having its cross section substantially defined by arcs (4, 4') or two ellipses with major axes (6, 6') being parallel to and slightly offset with respect to the plane (8) of longitudinal symmetry of the groove (10); and
said end tract (2) further being tapered starting from a substantially parabolic
profile (14) having its line of axial symmetry lying in the plane (8) of longitudinal symmetry of the groove (10) and also having its vertex (16) spaced from the exit edge (18) of the groove (10).

Claims 1-5 of the ’728 patent provide as follows:

Claim 1. A countermatrix for a pipe bending machine, the countermatrix comprising an elongated body having an elongated groove therein, the elongated body having a longitudinal axis, and the groove having arcuate cross sections in planes parallel to each other and perpendicular to said axis that decrease in radius of curvature toward one end of said elongated body.
Claim 2. A countermatrix as claimed in claim 1, said groove having circular cross-sectional configurations in planes perpendicular to said axis and parallel to each other, said circular cross-sectional configurations being of constant radius of curvature toward the other end of said elongated body.
Claim 3. A countermatrix for a pipe bending machine, comprising an elongated body having an elongated groove extending longitudinally thereof, said groove having a longitudinal axis, said groove having side walls having radii of curvature, said radii of curvature decreasing in a direction toward one end of said elongated body more rapidly than along a central portion of said body midway between the ends of said body.
Claim 4. A countermatrix as claimed in claim 3, the rate of decrease of said radii increasing in said direction upon progressively approaching said one end of said elongated body, whereby cross sections of the side walls of said groove in planes parallel to said axis are concave. Claim 5. A countermatrix as claimed in claim 3 the rate of change of said radii from said central portion of said body toward the other end of said matrix being zero.

The parties agree on the construction of most of the terms in the disputed claims. The points of contention can be summa rized as follows. As to Claim 1 of the `802 patent the parties differ as to their pro posed constructions of the terms "substan tially defined by the arcs of two ellipses and "tapered according to substantially el liptic profiles as such terms describe the "end tract." Regarding Claims 1�5 of the `728 patent the parties differ as to their proposed constructions of two terms: first the term "arcuate" as it relates to the parallel cross-sections of the "groove and second the requirement that the groove have "side walls having radii of curvature."

II. LEGAL STANDARD FOR CLAIM CONSTRUCTION

Claim construction is a question of law to be determined by the Court. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). It is well estab lished that in interpreting an asserted claim a court should look first to the in trinsic evidence of record i.e. the claims themselves the specification and the pros ecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed.Cir.1996).

The court must look first to the actual wording of the claims. Id. at 1584. The words of a patent claim are to be given their common and ordinary meaning. Unlike other legal writings however the meaning given to terms used in patent claims is the common and ordinary mean ing to "one skilled in the art." Schenck v. Nortron Corp., 713 F.2d 782, 787 (Fed.Cir. 1983). Although words in a claim are gen erally given their ordinary and customary meaning a patentee may choose to be his or her own lexicographer and use terms in a manner other than their ordinary mean ing provided that the definition of the term is clearly stated in the patent specifi cation or the file history. Vitronics, 90 F.3d at 1582.

The second tier of intrinsic evi dence guiding the construction of claims is the language of the patent specification. See Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir.1985). The specification functions as a dictionary to explain the claimed subject matter and define the terms used in the claims. Minnesota Min. and Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1566 (Fed.Cir.1992). The specification is to be used only to interpret words or phrases of a patent claim not to add to or detract from the language of the claims. See, In re Paulsen, 30 F.3d 1475, 1480 (Fed.Cir.1994) (quoting E.I. du Pont de Nemours & Co. v Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed.Cir.1988) cert. denied, 488 U.S. 986, 109 S.Ct. 542, 102 L.Ed.2d 572 (1988)).

Finally the court should also exam ine the prosecution history of the patent that is the public record of the proceed ings before the United States Patent Of fice. "The prosecution history limits the interpretation of claim terms so as to ex clude any interpretation that was dis claimed during prosecution." Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed.Cir.1995) cert. denied, 516 U.S. 987, 116 S.Ct. 515, 133 L.Ed.2d 424 (1995).

Guided by these principles the Court now turns to the disputed claims.

III. CONSTRUCTION OF CLAIMS

A. The `8O~2 Patent

The heart of the parties' disagree ment as to the shape of the groove de scribed in the `802 patent is whether the "end tract" is composed of cross-sections that are non-circular throughout or non-circular only in part. Plaintiff contends that most cross sections of the end tract would be semi-circular on the bottom (in the parabolic area that has not yet begun to taper and that retains its semi-circular shape) and "roughly elliptical on their lat eral portions" where the tapering has be gun. Pl.'s Brief at 5. Plaintiff then con tends that cross-sections taken closest to the exit edge of the end tract would be entirely non-circular since the semi-circu lar parabolic region would have ceased by that point.

Defendants disagree with Plaintiff's characterization of what comprises the "end tract." Defendants assert that the patent claims and specifications define the "end tract" only as the tapered portion of the groove marked on the patent's Fig ures by cross-hatched lines. Defendants recognize that the bottom of the groove in the parabolic area remains semi-circular. They do not however agree that this area should be included in the definition of "end tract." Therefore Defendants claim that cross-sections of the end-tract do not in clude any semi-circular shapes but rather include only the shape of the tapered area which Defendants assert is purely ellipti cal.

The Court agrees with Defendants that the patent claims define the "end tract" only as the tapered area marked by cross hatched lines. The Court finds however that the "end tract" as defined is entirely non-circular but not "purely elliptical."

The language of Claim 1 of the `802 patent clearly defines the end tract as the tapered area of the groove distinct and apart from the semicircular portion of the groove. The words "end tract" in the claim are always followed by "(2) refer ring to the cross-hatched network of lines in Figure 1 that represent the tapered area in contrast to the rest of the semi circular shaped groove. Claim 1 itself nev er describes the end tract as including the semicircular portion of the groove. The language of the claim is supported by the specification which states in pertinent part:

As can be observed in FIG.1 the shaped groove countermatrix of the present in vention has a semicircular section except in an end tract 2 shown by a network of lines. Such a tract as can be observed from FIGS. 4 and 5 is tapered both in the transversal and in the longitudinal sense according to substantially ellipti cal profiles.

`802 Patent Col. 2 lines 50-55. Therefore the actual wording of the claim as well as the language of the specification and the illustrative embodiments supports Defen dants' position that the "end tract" de scribes only the tapered area of the groove and does not include the semicircu lar portion in the parabolic area.

Having concluded what constitutes the end tract the Court must now construe the shapes of the end tract's cross-sec tions. The Court agrees with Defendants that the end tract does not include cross-sections that are circular in part. It does not follow however that the cross-sections of the end tract must be elliptical as De fendants would have it. The claim de scribes the end tract as "being tapered according to substantially elliptic profiles." The term "substantially as Plaintiffs point out in their brief "modifies the term `elliptical' such that the elliptical portions of the cross-sections need not describe a mathematically exact ellipse." Pl.'s Brief at 6. The Court may not construe the claim as to read out the word "substantially." Therefore according to the plain language of Claim 1 of the `802 patent cross-sec tions of the end tract while they may not include circular arcs are not limited to purely elliptical shapes.

B. The `728 Patent

The `728 patent uses nearly iden tical specification language and identical drawings as the `802 patent although the wording of the claims is quite different. The dispute between the parties however is much the same. Here too Plaintiff argues that certain cross-sections of the groove are "non-circular in part nieaning that most cross-sections will incorporate some circular curves (on the bottom of the groove) and some non-circular curves (on the sides of the tapered portion of the groove). Only the cross-sections very near the exit edge of the groove will be entirely non-circular. Plaintiff asserts that this construction is consistent with the disput ed claim language which describes the groove's cross-sections as "arcuate" and the groove as having "side walls having radii of curvature."

Defendants contend that these disputed terms describe an end tract with cross-sections that must be non-circular and el liptical throughout. According to Defen dants the claims of the `728 patent de scribe a groove with two different sections; one that has circular curvature that main tains a constant radius toward one end of the groove and another section with "arcu ate" cross-sections that decrease in radii (i.e. taper) toward the other end of the groove. Defendants acknowledge that the claims themselves do not describe where one section begins and the other ends but argue that the specification and drawings indicate that the second section is indeed the same end tract as defined in the `802 patent and as evidenced by the network of cross-hatched lines in Figure 1.

In order to construe the meaning of "arcuate" as it is used to describe the cross-sections of the groove the Court looks first to the actual wording of Claim 1 of the `728 patent. Significantly the term "end tract" appears nowhere in the claim. Nor does the term "elliptical." Rather the claim describes "an elongated body having an elongated groove therein and goes on to describe the cross sections of the groove as being "arcuate" and decreas ing in radius of curvature toward one end of the groove. Unlike the wording of the `802 claim then this claim does not limit its description to cross-sections of the end tract. It follows that in contrast to the `802 patent cross-sections of the groove in this patent do include the semi circular curve of the bottom of the groove as well as the non-circular portions of the groove where it tapers toward the exit edge.

The next question is whether the term "arcuate as it applies to the non-circular portions of the cross-sections means the same thing as "elliptical." Defendants as sert that the term "arcuate" must describe elliptical cross-sections because arcuate is not defined by the claim language and the specification and drawings describe an end tract that is defined by elliptical shapes. Def.'s Brief at 18. Plaintiff argues that the term arcuate is broader than "ellipti cal" or "substantially elliptical." Indeed Plaintiff chose to use the words "substan tially elliptical" to describe the cross-sec tions of the end tract in the `802 patent but chose different wording in this patent. Namely C.M.L. used neither the term "el liptical nor the term "end tract" in the `728 patent. It is well-established that "different words or phrases used in sepa rate claims are presumed to indicate that the claims have different meaning and scope .... ” Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed.Cir.1999).

According to the actual wording of the claim, then, the term “arcuate” should be construed more broadly than “substantially elliptical.” Whether the language of the specification changes this construction is a close question. Defendant argues that the specification in the ’728 patent (which is nearly identical to that of the ’802 patent) describes an end tract with cross-sections “made up of two arcs of equal ellipses, ... which arcs are interiorly radiused to each other by an arc of ellipse.” ’728 patent, Col. 2, Ins. 57-61. Defendants urge that “[tjhese repeated references to elliptical shapes demonstrates that the term arcuate must describe elliptical, and therefore, non-circular cross-sections in the end tract.” Def.’s Brief at 18. The specification, however, is to be used only to interpret words or phrases of a patent claim, not to add to, or detract from, the language of the claims. See, In re Paulsen, 30 F.3d at 1480. Under this principle of claim construction, the Court concludes that the term “arcuate” includes, but is not limited to, elliptical cross-sections. To conclude otherwise would neglect Plaintiff C.M.L.’s choice of different language in the ’728 patent.

This analysis also applies to the final disputed term, the requirement in Claim 3 that the groove have “side walls having radii of curvature.” Here again, Defendants contend that this language means that the groove must have cross-sections that are elliptical and non-circular throughout. The Court finds, however, that this term, like “arcuate,” does not restrict the shape of the side walls to that of an ellipse. Nothing in the claim language describe the side walls as being elliptical, and although the specification characterizes the end tract as being defined by elliptical shapes, the specification may not be used to detract from the actual wording of the claims. Therefore, the Court concludes that the term “side walls having radii of curvature” in Claim 3 does not require elliptical cross-sections.

IV. CONCLUSION

For the reasons set forth above, the Court construes the disputed terms as follows:

* The term “end tract” as it is used in Claim 1 of the ’802 patent is limited to the tapered area of the groove that is marked by cross-hatched lines on Figure 1. The “end tract” as so defined is entirely non-circular, but not “purely elliptical.”

* The term “arcuate” in Claim 1 of the ’728 patent, as it refers to cross sections of the groove, includes the semicircular curve of the bottom of the groove, as well as the non-circular portions of the groove where it tapers toward the exit edge.

* The term “arcuate” in Claim 1 and the terms “having side walls having radii of curvature” in Claim 3 of the ’728 patent describe cross-sections that are non-circular at least in part, and may include, but are not limited to, elliptical shapes. 
      
      . Numbers in parentheses refer to points on the illustrative figures included in the patents.
     