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Danfoss Power Solutions Inc. v. Deltatech Controls

United States District Court, D. Minnesota

April 8, 2019

DANFOSS POWER SOLUTIONS INC., Plaintiff,
v.
DELTATECH CONTROLS, Defendant.

          REDACTED CLAIM CONSTRUCTION ORDER

          Nancy E. Brasel United States District Judge

         This matter is before the Court for construction of certain terms found in U.S. Patent No. 7, 456, 828 (“the ‘828 patent”) in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370, 390-91 (1996). The parties prepared an amended joint claim construction statement, and each side submitted two briefs on claim construction issues. The Court held a claim construction hearing on December 20, 2018. [See ECF No. 125 (“Hr'g Tr.”).]

         BACKGROUND

         Plaintiff Danfoss Power Solutions Inc. (“Danfoss”) brings this patent infringement suit against defendant DeltaTech Controls (“DeltaTech”), alleging infringement of the ‘828 patent. The patent covers a joystick device used to control heavy machinery and the like. [ECF No. 101-1 (‘828 patent[1] Abstract).] The parties ask the Court to construe eight of the patent's terms. [ECF No. 105 (Am. Joint Cl. Constr. Statement (“Cl. Constr. Stmt.”)).]

         GENERAL PRINCIPLES

         Courts, rather than juries, are to construe patent claims. Markman, 517 U.S. at 391. In construing claims, courts give claims their ordinary and customary meaning, which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “[B]ecause patentees frequently use terms idiosyncratically, ” courts look to intrinsic evidence, including “the words of the claims themselves, the remainder of the specification, [and] the prosecution history, ” as well as “extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. at 1314 (citations omitted). “[T]he claims themselves provide substantial guidance as to the meaning of particular claim terms, ” id., but they “do not stand alone.” Id. at 1315. They are part of “‘a fully integrated written instrument,' consisting principally of a specification that concludes with the claims, ” and must therefore “be read in view of the specification.” Id. (citation omitted). The specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Courts may also consider the patent's prosecution history. Id. at 1317. “[L]ike the specification, the prosecution history provides evidence of how the [United States Patent and Trademark Office (“PTO”)] and the inventor understood the patent.” Id. (citation omitted). The prosecution history may “inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Id. (citations omitted). But “because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id. (citations omitted).

         Extrinsic evidence consists of “all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317 (citations omitted). While extrinsic evidence “can shed useful light on the relevant art, ” it “is less significant than the intrinsic record in determining the legally operative meaning of disputed claim language.” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (quotation marks and citation omitted); see Phillips, 415 F.3d at 1317. Extrinsic evidence is viewed as “less reliable” than intrinsic evidence. Phillips, 415 F.3d at 1318.

         CLAIM CONSTRUCTION

         I. The Claims at Issue

         The parties dispute the construction of the following claim terms: “main electronic controller, ” “control actuator, ” “in electronic communication with, ” “in electric communication with, ” “communicates with, ” “pivotally connected, ” “interconnect device, ” and “movement.” Claims 1 and 7 contain the first seven disputed terms:

1. A joystick device in electronic communication with a remotely located main electronic controller, the joystick device comprising: a base assembly having a first microprocessor in electronic communication with the main electronic controller; a grip assembly pivotally connected to the base assembly; a second microprocessor disposed within the grip assembly; an interconnect device in electric communication with the first microprocessor; and wherein the first microprocessor communicates with the second microprocessor via the interconnect device.
7. A joystick device in electronic communication with a remotely located control actuator, the joystick device comprising: a base assembly having a first microprocessor in electronic communication with the control actuator; a grip assembly pivotally connected to the base assembly; and a second microprocessor disposed within the grip assembly and in electronic communication with the first microprocessor via an interconnect device.

(‘828 patent col. 3 ll. 30-col. 4 l. 2, col. 4 ll. 15-24 (emphasis added).) The term “movement” is found in Claims 4 and 10, which recite that the joystick device comprises “sensing elements for detecting movement of the joystick device.” (Id. col. 4 ll. 8-9, 31-32 (emphasis added).) Claims 1 and 7 are independent claims. Claims 2-6 are dependent from Claim 1; Claims 8-12 are dependent from Claim 7.

         A. “main electronic controller”

          The term “main electronic controller” is found in the preamble and the body of Claim 1: “A joystick device in electronic communication with a remotely located main electronic controller, the joystick device comprising: a base assembly having a first microprocessor in electronic communication with the main electronic controller.…” (Id. col. 3 ll. 30-34 (emphasis added).) The parties dispute whether “main electronic controller” is a part of joystick device claimed, and request construction of this term as well.

         1. “main electronic controller” is a claim limitation

         Danfoss argues that “main electronic controller” is not part of the claimed joystick device. In support, it relies on the language of the preamble of Claim 1 (the preamble consisting of everything in the claim preceding the word “comprising”). “A preamble is not a claim limitation if the claim body defines a structurally complete invention ... and uses the preamble only to state a purpose or intended use for the invention.” Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1236 (Fed. Cir. 2017) (quotation marks and citation omitted). “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality' to the claim.” Catalina Mktg. Intʹl, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “[D]ependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.” Id. (citing Bell Comm. Research, Inc. v. Vitalink Comm. Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[W]hen the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.”) (emphasis in original)).

         Danfoss maintains that the phrase “the joystick device comprising” in the preamble indicates that the claims are directed to a joystick device, not the joystick device and the main electronic controller. Thus, the term “main electronic controller” in Claim 1 merely describes the principal intended use of the joystick device, and is not a claim limitation. See Georgetown Rail, 867 F.3d at 1236 (finding term in preamble was “meant to describe the principal intended use of the invention but not to import a structural limitation”). But the Federal Circuit has found that where “language appears in both the preamble and body” of a claim, “the applicants specifically included this language in the claim not once, but twice. By virtue of its inclusion in the body of [the claim], this phrase limits [the claim].” Catalina Mktg., 289 F.3d at 811.

         Here, “main electronic controller” is included in both the preamble and the body of Claim 1. Moreover, Claim 1 depends on the preamble phrase “a remotely located main electronic controller.” The preamble phrase is necessary to understand the term “a main electronic controller” in the body of the claim. See id. at 808; Pacing Techs., LLC v. Garmin Intern., Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015) (holding that the preamble to a claim was limiting because “the preamble terms ‘user' and ‘repetitive motion pacing system' provide antecedent basis for and are necessary to understand positive limitations in the body of claims” where the claim body recited “the user” and “the repetitive motion pacing system”). For these reasons, the term “main electronic controller” is a claim limitation.

         Danfoss argues that if the claim had required a main electronic controller, the patent examiner would have objected to the drawings of the device because they do not show a main electronic controller (‘828 patent figs. 1-3). See 37 C.F.R. § 1.83(a) (“The drawing in a nonprovisional application must show every feature of the invention specified in the claims.”). But drawings are not always required. 35 U.S.C. § 113 provides that the patent “applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission….” (emphasis added). The ‘828 patent specification purports to be an improvement over U.S. Pat. No. 6, 550, 562 to Brandt et al. (“Brandt”).[2] (‘828 patent col. 1 ll. 34-43 (explaining that Brandt “discloses a joystick controller….”).) The patent examiner may not have required a drawing of the main electronic controller given the state of the prior art. [See ECF No. 108-3 at 8-18 (“Def.'s Ex. E”) (Brandt patent figs. 1 & 2 (showing a main “controller 48” connected to “controller 47” within “hand grip 44”)).] Thus, the lack of a figure showing a “main electronic controller” fails to persuade the Court that the “main electronic controller” is not a claim limitation.

         2. Construction of “main electronic controller”

         Danfoss argues that the term “main electronic controller” is clear and does not require construction. DeltaTech proposes a construction of the term as “a remotely located controller used to control a function of a piece of heavy machinery.” (Cl. Const. Stmt. at 2.)

         The first question is whether the term “main electronic controller” means “remotely located.” Danfoss maintains that nothing in the term “the main electronic controller” in the body of Claim 1 specifies that it must be remote. But the term “a remotely located main electronic controller” in the preamble of Claim 1 provides an antecedent basis for “the main electronic controller” in the claim body. As noted above, “dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.” Catalina Mktg., 289 F.3d at 808.

         The intrinsic evidence also supports construing the main electronic controller as remotely located. A specification is limiting when “[e]very embodiment described in the specification … and every section of the specification” describes the invention one way. Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1137 (Fed. Cir. 2016), cert. denied, 137 S.Ct. 2267 (2017). The ‘828 patent Abstract recites, “[a] joystick device is provided that is in electronic communication with a remotely located main electronic controller used to control heavy machinery and the like.” (‘828 patent Abstract (emphasis added).) The Background of the Invention similarly describes “a remotely located main controller.” (Id. col. 1 ll. 30- 31 (emphasis added).) The specification further states that “[t]he present invention is directed towards a joystick device in electronic communication with a remotely located main electronic controller used to control heavy machinery and the like. The joystick device includes a base assembly having a first microprocessor in electronic communication with the main electronic controller.” (Id. col. 1 ll. 56-61 (emphasis added).) It also repeatedly recites “the remotely located main controller.” (Id. at 2 ll. 40-43, 50, 53, col. 3 ll. 4-5, 15-16, 28 (emphasis added); see id. at col. 2 ll. 51-53 (“Specifically, a cable (not shown) engages with the external interconnect device and connects the joystick device to the remotely located main controller.”) (emphasis added).) The evidence is clear, and the Court therefore construes “main electronic controller” to be “remotely located.” The second question is whether, as DeltaTech urges, the term “main electronic controller” is limited to controlling “heavy machinery.” The Court will not add this limitation, because nothing in Claim 1 limits “main electronic controller” to heavy machinery. While the Background of the Invention states that “[t]he present invention relates to control devices and, more specifically, joystick devices for controlling heavy machinery, ” (id. col. 1 ll. 13-15), both the Abstract and the Summary of the Invention describe a “main electronic controller used to control heavy machinery and the like.” (Id. Abstract, col. 1 ll. 57-59 (emphasis added).) The Description of the Invention also states that the joystick device “is used to control the movement of heavy machinery and the like.” (Id. col. 2 ll. 55-56 (emphasis added).)[3] The inventor clearly contemplated that the main electronic controller could control something other than heavy machinery.

         The Court therefore construes the term “main electronic controller” as “a remotely located controller configured to control functions of a machine.”

         B. “control actuator”

         Like the term “main electronic controller” in Claim 1, the term “control actuator” is found in both the preamble and the body of Claim 7: “A joystick device in electronic communication with a remotely located control actuator, the joystick device comprising: a base assembly having a first microprocessor in electronic communication with the control actuator….” (‘828 patent col. 4 ll. 15-19 (emphasis added).) Danfoss asserts that “control actuator” be given the plain and ordinary meaning of a “device configured to receive a signal and convert it into mechanical motion.”[4] (Cl. Constr. Stmt. at 13.) DeltaTech argues that “control actuator” should be construed as “a remotely located component used to control a function of a piece of heavy machinery.” (Id. at 14.)

         The specification supports the construction of “control actuator” as a device configured to receive a signal, and describes the main electronic controller “driv[ing]” control actuators. (‘828 patent col. 2 ll. 41-45 (a microprocessor “transmits a single serial communication stream to the remotely located main electronic controller, which is used to drive control actuators (not shown)”); see Id. col. 3 ll. 6-9 (stating that “the main controller controls and drives control actuators (not shown)”).) Danfoss relies on dictionary definitions of “actuator” to argue that it is a well-known term in the art. The Electrical Engineering Dictionary defines “actuator” in part as “a device, usually mechanical in nature, that is controlled by a computer.” [ECF No. 101-9 (Electrical Engineering Dictionary (CRC Press LLC 2000).] Merriam-Webster's Collegiate Dictionary defines “actuator” in part as “a mechanical device for moving or controlling something.” [ECF No. 101-8 (Merriam-Webster's Collegiate Dictionary (11th ed. 2003)).]

         DeltaTech does not dispute that the “control actuator” is a device configured to receive a signal and convert it into mechanical motion. Relying on its arguments regarding the term “main electronic controller, ” DeltaTech argues that a “remotely located” limitation be added to “control actuator.” [ECF No. 106 (“Def.'s Resp. Br.”) at 23-24.] Danfoss argues that “remotely” is not in the body of Claim 7, and similarly relies on its arguments addressing “main electronic controller.” [ECF No. 99 (“Pl.'s Opening Br.”) at 25; see Pl.'s Reply Br. at 23.] Like the term “main electronic controller” in Claim 1, the preamble of Claim 7 recites “a remotely located control actuator, ” and the claim body recites “the control actuator.” (‘828 patent col. 4 ll. 15-19 (emphasis added).) The Court finds that the preamble phrase “a remotely located control actuator” provides an antecedent basis for “the control actuator” in the body of Claim 7. See Catalina Mktg., 289 F.3d at 808. Neither party offers other evidence as to whether the “control actuator” is “remotely located, ” or attempts to distinguish “main electronic controller” from “control actuator” on this issue.[5]

         The Court also rejects DeltaTech's limitation of the term “control actuator” to heavy machinery. Nothing in Claim 7 limits “control actuator” to heavy machinery. Moreover, the specification states that the claimed joystick device “is used to control the movement of heavy machinery and the like.” (‘828 patent col. 2 ll. 55-56 (emphasis added).) Because the ...


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