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Alloc, Inc. v. Lifton

July 18, 2007

ALLOC, INC., BERRY FINANCE, N.V. AND : VALINGE ALUMINIUM AB, PLAINTIFFS,
v.
NORMAN D. LIFTON CO., BALTA U.S., INC. AND BALTERIO, N.V., DEFENDANTS.



The opinion of the court was delivered by: Honorable Paul A. Crotty, United States District Judge

OPINION & ORDER ON: CLAIM CONSTRUCTION

Plaintiffs Alloc Inc. ("Alloc"), Berry Finance N.V. ("Berry"), and Valinge Innovation AB, formerly Valinge Aluminium AB ("Valinge") bring this action against Defendants Norman D. Lifton Co. ("Lifton"), Balta U.S. Inc. ("Balta"), and Balterio, N.V. ("Balterio"), alleging infringement of claims 10, 13-15, 22, 23, and 25-27 of U.S. Patent No. 6,516,579 (the "'579 patent"), claims 1-4 of U.S. Patent No. 6,023,907 (the "'907 patent"), and claims 21, 31, 32, 35 and 40 of Reissued U.S. Patent No. 5,706,621 (the "'621 reissue patent"). The parties now move for claim construction under Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and have extensively briefed the meaning of the relevant claim terms. On November 29, 2006, the parties set forth their positions in further detail at a Markman hearing before the Court. The parties have also submitted proposed claim constructions. Having carefully considered the parties' submissions, the Court now construes the relevant claim language as set forth below.

BACKGROUND*fn1

Valinge, a Swedish corporation, is the assignee of the three patents at issue, which are part of a patent family covering a method for assembling floor panels invented by Tony Pervan (the "Pervan patents"). The patent family originates from a 1993 Swedish patent application by Valinge, which was the basis for the priority claim of a 1994 Patent Cooperation Treaty ("PCT") application. The PCT application was in turn the basis for five U.S. patents; the '621 patent being the U.S. parent. The specification and drawings are functionally identical in all of the U.S. patents. Berry, a Belgian corporation, is the exclusive licensee of the patents, and Alloc is a U.S. affiliate of Berry and sub-licensee of the patents. Balterio, a Belgian corporation, manufactures "Click-Xpress" floor panels that allegedly infringe the patents, and Lifton and Balta are U.S. corporations selling those panels in this country.

I. General Principles of Claim Construction

"It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotations and citations omitted). The claim terms are generally given their "ordinary and customary meaning," which is the meaning they would have "to a person of ordinary skill in the art in question at the time of the invention" who has read them in "the context of the entire patent, including the specification." Id. at 1312-13 (citations omitted).

"In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges" and claim construction may be accomplished by "the application of the widely accepted meaning of commonly understood words," with the aid of a general purpose dictionary, if necessary. Id. at 1314. For more complicated claims, a court first considers whether the meaning of the terms is revealed by intrinsic evidence: the claim language as a whole, the specification, and the patent prosecution history. As to claim language, the context in which a term is used within the claim can provide "a firm basis for construing the claim" and the meaning of terms will normally be consistent across different claims in a patent. Id. Similarly "the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id. at 1315.

Notwithstanding the usefulness of the claim language standing alone, 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." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Moreover, the inventor may use the specification to give a special definition to claim terms distinct from their ordinary meaning, or to disclaim or disavow potential claim scope. Phillips, 415 F.3d at 1316. In such cases the inventor's intention to define or disclaim must be clearly expressed in the specification. Conoco, Inc. v. Energy & Environmental Intern., L.C., 460 F.3d 1349, 1357-58 (Fed. Cir. 2006). While the specification is helpful in understanding the meaning of the claim terms, the court may not simply import limitations into the patent claims from the specification, particularly based on a preferred embodiment or embodiments. See id.; see also Phillips, 415 F.3d at 1323. The prosecution history is also relevant evidence of the meaning of the claim terms, but it is more ambiguous and therefore less useful than the specification due to the unfinished nature of the negotiation it records. Its primary value to the court is to allow the exclusion of "any interpretation that was disclaimed during prosecution." Chimie v. PPG Industries, Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (internal quotation omitted).

Where the intrinsic evidence is not conclusive, the court may consider extrinsic evidence such as expert testimony, dictionaries and learned treatises. Phillips, 415 F.3d at 1317. Such evidence may be useful in educating the court as to the underlying technology and to the understanding given certain terms in the relevant technological field. It is, however, less reliable than intrinsic evidence, and should be considered only with caution and in the context of the intrinsic evidence. In particular, "conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court." Id. at 1318.

II. The Claims at Issue

At the Markman hearing, the parties informed the Court that various disputes over claim language had been resolved. The remaining claims containing language that is in dispute are claims 10 and 22 of the '579 patent, claim 1 of the '907 patent and claims 21 and 31 of the '621 reissue patent.

Claim 10 of the '579 patent reads:

A mechanical locking system for locking a first edge of a first panel to a second edge of an identical second panel, the mechanical locking system comprising: a tongue and groove on the first edge and the second edge forming a first mechanical connection locking the first and second edges to each other in a first direction at right angles to a principal plane of the panels; a locking device arranged on an underside of the first and the second edges, the locking device forming a second mechanical connection locking the first and the second edges to each other in a second direction parallel to the principal plane and at right angles to the edges; the locking device including a locking groove which extends parallel to and spaced from the second edge, the locking groove being open at the underside of the second edge and including an internal surface; the locking device further including a strip extending from the first edge, the strip extending throughout substantially an entire length of the first edge and being provided with a locking element projecting from the strip; the strip, the locking element, and the locking groove being configured such that when the second edge is pressed against an upper part of the first edge and is then angled down, the locking element can enter the locking groove; the locking element has a locking surface which faces the first edge and is configured so as to contact the internal surface of the locking groove when the first and second edges are joined together to prevent substantial separation of the joined first and second edges; and the locking element further including an outer portion which is most distant to the joined edges and is not in contact with the locking groove when the first and second edges are joined together. '579 patent, col. 11-12 (emphasis added to disputed terms).

Claim 22 reads:

A floating laminate floor board including an upper decorative wear layer, a core layer arranged beneath the upper decorative wear layer, the core layer being made of a material that is not as hard as the upper decorative wear layer, a base layer beneath the core layer, and a mechanical locking system for locking a first edge of a first floor board to a second edge of an identical second floor board, the mechanical locking system comprising: a tongue and groove on the first edge and the second edge forming a first mechanical connection locking the first and second edges to each other in a first direction at right angles to a principal plane of the floor boards, the tongue and groove being formed in the material of the core layer; and a locking device arranged on an underside of the first and the second edges, the locking device forming a second mechanical connection locking the first and the second edges to each other in a second direction parallel to the principal plane and at right angles to the edges, wherein the locking device includes a locking groove which extends parallel to and spaced from the second edge, the locking groove being open at the underside of the second edge and including an internal surface, wherein the locking device further includes a strip extending from the first edge, the strip extending throughout substantially an entire length of the first edge and being provided with a locking element projecting from the strip, wherein the strip, the locking element, and the locking groove are configured such that when the second edge is pressed against an upper part of the first edge and is then angled down, the locking element can enter the locking groove, and wherein the locking element has a locking surface which faces the first edge and is configured so as to contact the internal surface of the locking groove to prevent substantial separation of the joined first and second edges. '579 patent, col. 13 (emphasis added to disputed terms).

Claim 1 of the '907 patent reads:

A method of laying and mechanically joining floor panels in parallel rows, wherein relative positions of the panels during the method can be defined as including first and second mutual positions, a first mutual position in which (i) the two panels are held in an angled position relative to each other and (ii) upper portions of adjacent edges of the two panels are in mutual contact, and a second mutual position in which the two panels are (i) located in a common plane, (ii) mechanically locked to each other in a first direction that is at right angles to the common plane, (iii) mechanically locked to each other in a second direction, that is at right angles to said first direction and to the adjacent joint edges, as a result of a first locking member disposed at one of the adjacent edges being connected to a second locking member disposed at the other one of the adjacent edges, and (iv) being displaceable in relation to each other in the direction of the adjacent joint edges, wherein said method comprises the steps of: (a) bringing a new one of the panels into an intermediary position where (i) a previously laid first one of the panels is located in a first row, (ii) a second one of the panels is located in a second row and is in said first mutual position in relation to the first panel, and (iii) the new panel is located in the second row and is in said second mutual position in relation to the second panel and is in a position relative to the first panel such that a mutual distance is present between the upper portions of the adjacent joint edges of the new panel and the first panel;

(b) while maintaining said second mutual position between the new panel and the second panel, displacing the new panel relative to the second panel into said first mutual position in relation to the first panel; and

(c) angling the new panel and the second panel together into said second mutual position in relation to the first panel. '907 patent, col. 10 (emphasis added to disputed terms).

Claim 21 of the '621 reissue patent reads:

A system for providing a joint between adjacent building panels, comprising: each of said building panels including a first edge and a second edge such that the first edge of each of said building panels forms a first mechanical connection with the second edge of an adjacent one of the building panels locking the first and second edges of the building panels to each other in a first direction at right angles to a principal plane of the panels, and a locking device arranged on a rear side of the building panels forming a second mechanical connection locking the building panels to each other in a second direction parallel to the principal plane and at right angles to the first and second edges, said locking device fitting within a locking groove extending parallel to and spaced apart from the first edge of said building panels, and which locking groove is open at the rear side of the building panels, the locking device comprising a strip integrally formed with the second edge of each of said building panels, said strip extending throughout substantially an entire length of the second edge and being provided with a locking element projecting from the strip, such that when two adjacent building panels are joined together, the strip projects from the rear side of the second edge of the panels with its locking element received in the locking groove of an adjacent building panel, the first and the second mechanical connections both allow mutual displacement of the building panels in a direction of the first and second edges, and the second mechanical connection enables the locking element to leave the locking groove if the respective building panel is turned about its first edge angularly away from the strip. '621 reissue patent, col.12 (emphasis added to disputed terms).

Finally, claim 31 of the '621 reissue patent reads:

A system for providing a joint between adjacent building panels, comprising: each of said building panels including a first edge and a second edge such that the first edge of each of said building panels forms a first mechanical connection with the second edge of an adjacent one of the building panels locking the first and second edges of the building panels to each other in a first direction at right angles to a principal plane of the panels, and a locking device arranged on a rear side of the building panels forming a second mechanical connection locking the building panels to each other in a second direction parallel to the principal plane and at right angles to the first and second edges, said locking device fitting within a locking groove extending parallel to and spaced apart from the first edge of said building panels, and which locking groove is open at the rear side of the building panels, the locking device comprising a strip formed at the second edge of each of said building panels, said strip extending throughout substantially an entire length of the second edge and being provided with a locking element projecting from the strip, such that when two adjacent building panels are joined together, the strip projects from the rear side of the second edge of the panels with its locking element received in the locking groove of an adjacent building panel, and the locking groove and the locking element being dimensioned such that when adjacent panels are joined together and the locking element is received within the locking groove, there is sufficient space within the locking groove to allow mutual displacement of the adjacent panels in a direction of the first and second edges and to enable the locking element to leave the locking groove if the respective building panel is turned about its first edge angularly away from the locking strip Prosecution History of Reissue of '621 Patent ("PH"), 621-RI-127 (emphasis added to disputed terms).

III. The Federal Circuit's Decision in Alloc v. ITC

In Alloc v. ITC, 342 F.3d 1361 (Fed. Cir. 2003), the Federal Circuit considered certain of the claim construction issues raised here. On appeal from a ruling by the International Trade Commission ("ITC"), the Federal Circuit construed, inter alia, claim 1 of the '907 patent and claim 21 of the original '621 patent.*fn2 In particular, the court ruled that all the Pervan patents incorporated the element of "play" in the claimed mechanism for holding floor panels together, regardless of whether that term was included in particular claim language. Alloc, 342 F.3d at 1370-73. The court based this determination on both the common Pervan patent specification and the prosecution history of the '621 patent. The court defined "play" as "a space between a locking groove on a first panel and the locking element of a panel adjacent to the first panel." Id. at 1367.

According to the Alloc court, the specification "read as a whole leads to the inescapable conclusion that the claimed invention must include play in every embodiment." Id. at 1370. This conclusion was based on the following findings:

(1) the "Technical Problems and Objects of the Invention" section of the specification describes the invention as including play;

(2) the specification teaches that play between the components of the locking mechanism is what permits displacement of connected panels, permitting disassembly and reassembly;

(3) The specification criticizes prior art floor systems without play; and

(4) All figures and embodiments imply or expressly disclose play.

Id. at 1369-70. The court stated explicitly that "the specification alone is sufficiently clear" so as to require that the Pervan patent claims be construed as including play. Id. at 1371.

The court also found an independent justification for such a construction in the original prosecution history of the '621 patent. The court found that the original PCT application included the element of play, and that the International Preliminary Examination Committee found it to be novel on that basis. Id. The Court further found that Plaintiffs gained allowance of the '621 patent over an initial rejection for obviousness in light of U.S. Patent No. 4,819,932 ("Trotter") by distinguishing the '621 patent based on the displacement and disassembly features enabled by play. Id. at 1371-72. After gaining allowance of its initial claims 1-20 based on play in the '621 patent, the Plaintiffs added new, nearly identical claims 21-23 that did not specifically mention play. Id. at 1372. The Court found that Plaintiffs did not "retract or modify the original representations that secured allowance of the original claims" and indeed acknowledged that the new claims "did not define the play that exists." Id. (quoting prosecution history) (emphasis added). In light of this prosecution history, the Court found that the Plaintiffs "expressly disavowed systems without play during prosecution of the parent '621 application." Id. The court further ruled that this disavowal was attributable to the "child" patents following the '621 patent, as they also included the same critical features of the '621 patent: "locking members, locking elements, or locking means that permit displacement of panels or release of panels during disassembly. Specifically, the asserted [claims] require the displacement of floor panels, or floor panels that are displaceable in relation to each other." Id.

IV. The '621 Patent Reissue/Reexamination

On June 30, 1999, less than two years after the '621 patent was originally issued, Valinge applied to the United States Patent and Trademark Office ("Patent Office") for a broadened reissue of the patent. The application was supported by Tony Pervan's affidavit claiming the following errors to be correct by the reissue:

Specifically, Applicant failed to include the subject matter of claims 24-40 which are included in this reissue application. In one specific example, Applicant failed to include an independent claim, such as claim 31, wherein the locking groove and the locking element are defined as being dimensioned such that when adjacent panels are joined together and the locking element is received within the locking groove, there is sufficient space within the locking groove to allow mutual displacement of the adjacent panels in a direction of the first and second edges and to enable the locking element to leave the locking groove if the respective ...


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