
    O2COOL, LLC, Plaintiff, v. ONE WORLD TECHNOLOGIES, INC. and Techtronic Industries North America, Inc., Defendants.
    Case No: 15 C 5008
    United States District Court, N.D. Illinois, Eastern Division.
    Signed 05/05/2016
    
      Michael Anthony Parks, Michelle Ware Skinner, Nathan P. Sportel, Thompson Co-burn LLP, Chicago, IL, Jonathan G. Musch, Sartouk. H. Moussavi, Thompson Coburn LLP, St. Louis, MO, for Plaintiff.
    Alex Hanna, Morgan, Lewis & Bockius LLP, Washington, DC, Emma D. Hall, Morgan, Lewis & Bockius LLP, Boston, MA, J. Donald Best, Michael Best & Friedrich LLP, Madison, WI, Jason C. White, Nicholas A. Restauri, Scott D. Sherwin, Morgan Lewis & Bockius LLP, Michael A. Stiegel, Paul R. Coble, Michael Best & Friedrich LLP, Chicago, IL, Melanie J. Reichenberger, Michael Best & Friedrich LLP, Milwaukee, WI, for Defendants.
   MEMORANDUM OPINION AND ORDER

Milton I. Shadur, Senior United States District Judge

02COOL, LLC (“02COOL”) asserts that One World Technologies, Inc. and Techtronic Industries North America, Inc. (collectively “Techtronic”) have infringed patents related to its cooling and hydration products. Having reached an impasse as to the meaning of certain claim terms contained in two of those patents—U.S. Patent No. 5,620,633 filed April 15, 1997 (the “’633 Patent”) and U.S. Patent No. 7,243,-860 filed July 17, 2007 (the “’860 Patent”)—the parties now look to this Court for aid in claim construction. This memorandum opinion and order conducts a Markman analysis to construe language contained in those patents.

Tenets of Claim Construction

In an action claiming patent infringement, the court must resolve any disputed issues of claim construction before moving to the infringement claim (Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1370-71 (Fed.Cir.2003)). Construction of a patent claim presents a question of law through which the court determines the scope and meaning of the claim (Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)).

To that end claim terms should be given their ordinary and customary meaning as understood by a person of ordinary skill in the art as of the effective filing date of the patent application (Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005) (en banc)). Claim language is the most important indicator of the meaning of the claim and should therefore be the central focus of the analysis (Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1387 (Fed.Cir.2002); Phillips, 415 F.3d at 1312). Beyond the claim language, a construing court should look primarily'to other intrinsic evidence: other claims within the same patent, the patent’s specification and the prosecution history (Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 955 (Fed.Cir.2000)). But as helpful as a patent’s specification may be in claim construction (Phillips, 415 F.3d at 1315), a court must be mindful to avoid importing limitations from the specification into the claims (id. at 1323).

If ambiguity lingers after the application of intrinsic evidence, a construing court may then turn to extrinsic evidence to supplement its interpretive efforts ( Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583-84 (Fed.Cir.1996)). For example, judges may consult and rely on dictionary definitions, although extrinsic in nature, so long as the definitions do not contradict claim terms (id. at 1584 n. 6). But when the patentee dons a lexicographer’s cap and crafts special definitions, those specially defined meanings trump ordinary usage—and so dictionary definitions are not then a proper resource (id. at 1582; Phillips, 415 F.3d at 1316).

Patent Subject Matter

02COOL is a developer and manufacturer of cooling and hydration products (O. Mem. 1). At issue here are two such products—the ’633 Patent entitled “Spray Misting Device for Use With a Portable-Sized Fan” and the ’860 Patent entitled “Portable Misting Device with Drinking Spout and Fan Assist” (id.). 02COOL alleges that Techtronic’s Arctic Cove 18V Bucket Top Misting Fan and Arctic Cove Personal Misting Bottle respectively infringe those patents. -But before the validity of those allegations can be considered, this Court is tasked with construing disputed claim terms found in the patents.

Construction of Disputed ’633 Patent Terms

At issue here is Claim 1 of the ’633 Patent (col. 8, 11. 40-59, with disputed terms in boldface):

A spray misting device for use with a portable fan for creating a cooling atomized mist spray,.the fan having a predetermined outline and thickness with a front and a rear and enclosing a fan blade unit between a front grille and a rear grille, said spray misting device comprising:
a body of given dimension having a hollow interior capable of holding a predetermined volume of a liquid and an applicator for providing an atomized mist spray of said liquid;
means for releasably securing said body to the rear of the fan so that said body is positioned behind the fan and said applicator is positioned at a point above the fan blade unit; and
means for actuating said applicator to issue said mist spray from above and in a direction towards a front of the fan blade unit;
whereby the fan blade unit generates a current of air which cools said atomized mist spray and delivers said spray to a user thereof.

Those disputed terms will be discussed seriatim following a recitation of each term alongside the parties’ dueling constructions of that term. What follows in the table format employed throughout this opinion are the parties’ respective proposed constructions, taken from their submission of a Joint Claim Construction Report (Dkt. No. 49).

This dispute over whether the applicator must be attached to the “body” is the predictable result of the patentee’s unclear drafting, which leaves ambiguous whether “an applicator ...” as well as “a hollow interior” is an object of the word “having.” But that ambiguity can be resolved by looking to multiple embodiments described in the specification that would be excluded by Techtronic’s proposed construction. To take one example, fig. 2 (see ’633 Patent at col. 3, 11. 43-44) shows an applicator attached to the screw: cap, which screw cap neither party asserts is a part of the body. Likewise, in fig. 6 (see ’633 Patent at col. 5, 11. 23-24) the applicator body is “integrally formed with the screw cap,” while the screw cap is “attached over the outlet” of the body. Constructions that exclude preferred embodiments are “rarely, if ever, correct” (Vitronics, 90 F.3d at 1583). Because Tech-tronic’s proposed construction would exclude such embodiments in which the applicator is attached to the screw cap rather than to the body, this Court construes “a body of given dimension having a hollow interior capable of holding a predetermined volume of a liquid and an applicator for providing an atomized mist spray of said liquid” in accord with 02C00L’s proposal.

Here the parties dispute whether the entire body or only part of it is required to be positioned behind the fan. 02C00L (0. Mem. 6) contends that Tech-tronic’s construction would impermissibly exclude numerous embodiments that show the base of the body positioned partially in front of the fan. Techtronic’s Resp. Mem. 6-7 does not really challenge that contention but suggests that the body does not include the base. But the specification (’683 Patent, with numeric figure references omitted) states repeatedly that the body includes the base:

3:19-20: “A spray misting device includes a body having an outline with a supporting base ...”
5:12-15: “A body of the misting device is shaped similarly to the corresponding misting device of the first and second preferred embodiments and includes a base
6:49-51: “A body of the misting device ... includes a base ...”

Because the body can plainly include a base, Techtronic’s construction would exclude multiple embodiments.

Techtronic’s Resp. Mem. 7 posits that the doctrine of claim differentiation precludes the result reached here. Under that doctrine, as reconfirmed in Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir.2004):

the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.

Here dependent claim 3 (’633 Patent at col. 8,11. 67-9:2) discloses a

body further comprising a base, an ergonomically formed midsection extending upward from said base, and an outlet which is engaged by a screw cap.

Techtronic’s Resp. Mem. 7 contends that because dependent claim 3 does include a “body further comprising a base,” the “body” referred to in independent claim 1 must not include a base. But that contention misses the mark entirely: Under the doctrine of claim differentiation as again explained by Liebel-Flarsheim, all that can be gleaned from the language of dependent claim 3 is that the body adverted to in independent claim 1 is not required to include a base. It certainly does not follow that the body in independent claim 1 cannot include a base. On the contrary, because claim 1 is presumed to be broader than claim 3, claim 1 necessarily covers bodies with a base.

In sum, Techtronic’s effort to salvage its construction of the disputed term fails. It must be rejected in favor of 02COOL’s more workable definition.

This dispute mirrors the preceding one in that the parties disagree on whether the applicator must be located entirely above the fan blade unit. And it can be resolved in the same way, for the specification is clear that the applicator includes a stem that enables the drawing of water from the body (see col. 3, 1. 40, reading “The applicator includes a stem ...”). In the majority of embodiments, that stem extends well beneath the fan unit (see, e.g., figs. 2 (J.A. 002), 4 (J.A. 003) and 6 (JA 004)). It follows then that adopting Techtronic’s definition would exclude multiple preferred embodiments and must therefore be rejected.

Techtronic’s Resp. Mem. 11-12 assertion that the patentee disavowed the broader construction proposed by 02C00L likewise calls for rejection. While the patentee indeed distinguished the prior art because it “directs much of the delivered fluid to the back of the fan blades ...” (’633 Patent at col. 1, 11. 49-51), that distinction concerned the location from which the spray is issued, not the location of the applicator as that term is defined in the patent.

Hence this Court again adopts 02C00L’s proposed construction. To this point, then, 02C00L’s counsel have pitched a shutout.

Lastly, this dispute concerns whether the function recited should be construed to include “from above and in a direction towards a front of the fan- blade unit.” But the parties agree that this is a means-plus-function limitation (see 35 U.S.C. § 112(f)), and as Phillips, 415 F.3d at 1311 has explained:

Means-plus-function claiming applies only to purely functional limitations that do not provide the structure that performs the recited function.

Here the description of the position from which the applicator issues a mist spray is structural, not functional (see TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C., 375 F.3d 1126, 1135 (Fed.Cir.2004), rejecting the assertion of a means-plus-function limitation on the ground that the disputed claim terms recited not only means but also location).

This Court therefore construes the function in conformity with 02C00L’s proposal. In sum, 02C00L has prevailed on all of the Markman disputes as to the terms of the ’633 Patent.

Construction of Disputed ’860 Patent Terms

Claim 16 of 02C00L’s ’860 Patent (col. 11, 11. 11-11:29, with disputed terms in boldface) reads:

A portable misting device, comprising: a body having an internal and fluid holding reservoir;
a fill port for refilling said fluid holding reservoir;
at least one discharge. port separate from said fill port and in fluidic communication with said reservoir;
a fluid conveying conduit extending from said discharge port and terminating in an orifice, said orifice being actuated to issue a mist spray; and
said orifice further comprising a hand-held pump subassembly for issuing fluid in at least one of said mist spray and a steady fluid flow, said pump su-bassembly further comprising:
an inlet plenum;
a control valve secured to a first outlet associated with said plenum; and
a valve actuator arm pivotally mounted to said control valve by an interiorly disposed ball valve such that, upon being engaged, said control valve issues said mist spray.

Just as with the ’638 Patent, each disputed term will be addressed in turn,

At the outset it is difficult to understand. Techtronic’s basis for deviating from the ordinary meaning of “discharge port” in its proposed construction. Tech-tronic’s Mem. 22 makes much of the fact that the discharge port should be separated from the inlet port, but a portion of the claim not in dispute—“separate from said fill port” (’860 Patent at col. 11, 1. 14)— already makes that perfectly clear and would indeed render Techtronic’s construction redundant. It is likewise difficult to understand why the ordinary term “discharge” would need to be replaced with the far more convoluted “outlet ... dedicated for allowing fluid to flow out of the fluid holding reservoir.” 02C00L’s straightforward (if somewhat tautological) construction of “discharge port” is therefore adopted.

Here Techtronic has charged that the disputed claim term is indefinite. As recently explained by Nautilus, Inc. v. Biosig Instruments, Inc., — U.S. -, 134 S.Ct. 2120, 2124, 189 L.Ed.2d 37 (2014):

In place of the “insolubly ambiguous” standard, we hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

02C00L seeks to counter Techtronic’s contention by pulling its proposed construction directly from the claim language (’860 Patent at col. 11,11.16-22):

a fluid conveying conduit extending from said discharge port and terminating in an orifice, said orifice being actuated to issue a mist spray; and
said orifice further comprising a hand-held pump subassembly for issuing fluid in at least one of said mist spray and -a steady fluid flow, said pump subassem-bly further comprising:

But construing the term along those lines would fender the specification nonsensical. Consider the following sentence (’860 Patent at col. 5,11. 63-67, with numeric figure references omitted):

the pump subassembly includes an inlet plenum, a piston pump secured to a first outlet associated with the plenum, an orifice in turn defining an outlet location of the piston pump.

How could an orifice include a pump su-bassembly if'that pump subassembly includes an orifice? Indeed, that is not the only instance in which the claim defines “orifice” contrary to how the term is used in the specification—’860 Patent at col. 8, 11. 40-46, again with numeric figure references omitted:

Referring also to FIG. 22, a quick-connect fitting extends from a remote end of the conduit, a mist/pour sub-assembly incorporating an interengaging quick connect fitting securing to the conduit end and incorporating orifices for issuing both the mist spray' and steady stream- fluid flow, reference again being made to the disclosure of FIGS. 8 and 8A.

Plainly a subassembly cannot “incorpo-rat[e]” orifices if those orifices “includ[e]” that subassembly.

Earlier this year Trustees of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1366-67 (Fed.Cir.2016) (internal citations omitted) found two patent claims to be indefinite on the ground that they

conflate a “byte sequence feature,” which is a feature extracted from machine code instructions, with the extraction of “resource information,” which is not a machine code instruction. Specifically, the claims describe the step of extracting machine code instructions from something that does not have machine code instructions. The claims are nonsensical in the way a claim to extracting orange juice from apples would be, and are thus indefinite.

On that score Trustees of Columbia Univ. is apples-to-apples' with the dispute here: 02C00L’s construction—which flows directly from and adopts the claim language—-would render the specification utterly nonsensical. That compels this Court to find the claim term indefinite.

02C00L’s construction again tracks the language of the claim, which recites (’860 Patent at col. 11, 11. 21-29) that the hand-held pump subassembly “further compris[es]” an inlet plenum, valve actuator arm and control valve. Techtronic’s Mem. 19 contends that because “a hand-held - pump subassembly” has no ordinary meaning, it should be defined based on an embodiment disclosed in the specification. But that contention im-permissibly leapfrogs over the first step in the analysis: reviewing the claim language itself (see Middleton, 311 F.3d at 1387). And that language clearly defines the su-bassembly as including three particular elements—elements that are not even found in Techtronic’s construction..

Moreover, Techtronic’s proposed reading poses still another ¡problem. Its 2d Supp. Mem. 4-5 points out that the term “further comprising” (’860 Patent at col. 11, ‘1. 22) signals that what follows are additional modifications to “hand-help pump subassembly.” So Techtronic, id. at 4 contends that:

the term must mean something on its own, separate and apart from the inlet plenum, control valve, and valve actuator arm. ...

But Techtronic provides no predicate whatever for why that is so. While a simple “comprising” likely would have been the clearer word choice, the patentee appears to have consistently used “further comprising” to transition from an object’s function to its elements (’860 Patent at col. 11,11.16-19 with emphasis added):

a fluid conveying conduit extending from said discharge port and terminating in an orifice, said orifice being actuated to issue a mist spray; and
said orifice further comprising a hand-held pump subassembly for issuing fluid in at least one of said mist spray and a steady fluid flow, said pump subassem-bly further comprising:
an inlet plenum;
a control valve secured to a first outlet associated with said plenum; and
a valve actuator arm . pivotally mounted to said control valve by an interiorly disposed ball valve such that, upon being engaged, said control valve issues said mist spray.

That sentence structure may be inartful, but there is no predicate for its being' fatal to 02C00L’s construction.

While 02C00L’s construction reasonably incorporates the subassembly’s elements, it unreasonably omits the limitation that the subassembly is hand-held. Indeed, in the April 12 Markman hearing held by this Court 02C00L’s counsel agreed that adding “hand-held” would be a reasonable—if in its view unnecessary—addition to its proposed construction. But “hand-held” is a clear limitation disclosed by the claim and must as such be included in the claim’s construction. In sum, this Court will construe “a hand-held pump subas-sembly” as “a hand-held assembly comprising an inlet plenum, a control valve, and a valve actuator arm.”

As to this term, Techtronic seeks to impose two limitations on the ordinary meaning of “inlet plenum”—that the plenum should be remote and that it should spawn more than one stream. On that first issue this Court’s construction' of “hand-held pump subassembly” should address Techtronic’s concern, for the “inlet plenum” has been construed to be an element of the hand-held pump subassembly and is therefore necessarily hand-held and remote from the main body.

Techtronic’s second proposed limitation—that the plenum must spawn two streams—collides head-on with the claim language (’860 Patent at col. 11, 11. 19-22, with emphasis added):

said orifice further comprising a hand-held pump subassembly for issuing fluid in at least one of said mist spray and a steady fluid flow, said pump subassem-bly further comprising:

From that claim language it is clear that the subassembly issues fluid in “at least one of” a mist spray and steady fluid flow—not necessarily both. Moreover, when the patent is read in its entirety it becomes apparent that what distinguishes claim 16 from other claims is that numerous other claims expressly disclose a dual function—drinking and misting—while claim 16 does not.

Techtronic’s contention that 02C00L disclaimed a broader scope for claim 16 during prosecution must also be rejected. In that respect Techtronic seeks to hang its figurative hat on comments submitted regarding a later-cancelled dependent claim in which the patentee distinguished the prior art (J.A. 0210):

Lau does not teach or suggest the provision of an inlet plenum. The closest Lau comes to a plenum is the tee connection, as shown in his Figures 4 and 5. Accordingly, there is no remote plenum which spawns more than one stream for drinking, spraying, squirting as needed for the user to have in hand. Rather, everything in Lau forms a part of a body that attaches to the bottle.

Techtronic posits that the just-quoted pat-entee’s statement effectively disavowed a broader construction of inlet plenum that would allow one or both of misting and drinking. But as explained in 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1322 (Fed.Cir.2013):

This court does not rely on the prosecution history to construe the meaning of the claim to be narrower than it would otherwise be unless a patentee limited or surrendered claim scope through a clear and unmistakable disavowal.

On that score the alleged disavowal is far from “clear and unmistakable.” For example, the patentee distinguished the prior art primarily on the grounds (1) that it involved a tee connection rather than a plenum and (2) that the tee connection was not attached to the bottle. That statement is simply not clear enough to constitute a disavowal that would overcome the claim’s clear language—language confirming that the plenum can issue at least one of a mist spray and steady fluid flow. Once more 02C00L’s proposed construction is adopted.

On this final contested term the parties dispute whether “control valve” should be defined to include “an interiorly disclosed ball valve.” But any such addition is wholly unnecessary, given the language of the claim (’860 Patent at col. 11, 11. 24-29, with emphasis added): ■

a control valve secured to a first outlet associated with said plenum; and
a valve actuator arm pivotally mounted to said control valve by an interiorly disposed ball valve such that, upon being engaged, said control valve issues said mist spray.

Because the claim plainly discloses that the valve actuator arm is mounted to the control valve by the ball valve, there is no need to add that limitation to the construction. For one last time 02COOL’s proposed construction is adopted.

Conclusion

For the reasons that have been set forth in this opinion, this Court adopts the following constructions of the disputed claim terms:

With the parties having been apprised of this Court’s constructions, they will now have to reassess their positions as to the underlying infringement action. To enabl.e them to update this Court on that score, this action is set for a status hearing at 8:45 a.m. May 27, 2016,

Appendix

There is a troubling (at least to this Court) tendency these days to use the paired words “comprised of’—a locution that alters the historical, and indeed still the proper, use of the word “comprise.” But on that score the Court of Appeals for the Federal Circuit has not fallen into that trap—instead it has itself engaged in the hallowed patent law practice of being its own lexicographer. H.W. Fowler’s Modern English Usage at 387 (3d ed. 1996) has explained what that authority views as the appropriate use of “comprise” by distinguishing it from “include”:

When two words such as include and comprise have roughly the same meaning, examination will generally reveal a distinction; and the distinction between the present two seems to be that comprise is appropriate when the content of the whole is in question, and include only-when the admission or presence of an item is in question: good writers say comprise when looking at the matter from the point of view of the whole, include from the part. With include, there is no presumption (though it is often the fact) that all or even most of the components are mentioned; with comprise, the whole of them are understood to be in the list.

But as a matter of its own lexicography, the Federal Circuit has turned that long-established and long-adhered-to distinction on its head. MagSil Corp. v. Hitachi Glob. Storage Techs., Inc., 687 F.3d 1377, 1383 (Fed.Cir.2012) has quoted earlier caselaw in that Circuit that explains that in patent law:

The transition “comprising” creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unre-cited elements.

For purposes of this opinion, then, this Court will treat “comprising” in accordance with the Federal Circuit’s usage. 
      
      . Memoranda filed by the parties are cited "Mem. —” or "Resp. Mem,—” or "[2d] Supp. Mem. —," with prefixes of "O.” and “T.” for 02C00L and Techtronic respectively. Cita-dons to the parties' Joint Appendix will take the form "J.A,—," while citations to the patents will take the form "col. —, 11.—.”
     
      
      . [Footnote by this Court] See Appendix.
     
      
      . Dependent claim 7 discloses “a stem extending downwardly from said applicator body ...” (’633 Patent át col. 9, 11. 18-19). As such, Techtronic’s Resp. Mem. 8-9 contends that the doctrine of claim differentiation gives rise to a presumption that the applicator disclosed in independent claim 1 must not in-elude a stem. But that contention can be rejected on the same ground that has been explained in the earlier discussion of claim differentiation: It is simply backward to argue that dependent claims limit the scope of independent claims.
     
      
      . See, e.g., claim 14 (’860 Patent at col. 10,11. 62-67 and col. 11, 11. 1-3 (emphasis added)):
      said orifice further comprising a hand-held pump subassembly for .issuing fluid in at least one of said mist spray and a steady fluid flow, said pump subassembly further comprising at least one of a flapper-type check valve in operative communication with a second outlet associated with said plenum, and a drinking nipple incorporating a bite valve insert, deformation of said insert permitting a steady stream fluid flow through said nipple.
     
      
      . All of that said, however, it strikes this Court that “liquid-receiving volume” is really an awkward way of conveying the meaning of the word "plenum,” which in plain English is ■ simply a synonym for a "space” that contains something (as contrasted with a. "vacuum”— an unoccupied "space”). It remains a mystery why some lawyers seem to' think that what they view as a more elegant word should be used rather than a straightforward word in common use.
     
      
      . Fowler’s fourth edition, issued just last year, is not available in this District Court’s library, but the just-quoted language has changed only slightly from that in the second edition, issued a half century ago in 1965 and a valued reference source in this Court’s own library ever since its publication. There is no reason to believe that the long-established distinction in meaning described in the above quotation have been altered in the most recent version of the work.
     