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SignalQuest, Inc. v. Chou

United States District Court, D. New Hampshire

June 13, 2016

SignalQuest, Inc.
v.
Tien-Ming Chou, OneQue Corporation, and Bravotronics Corporation Opinion No. 2016 DNH 099

          MEMORANDUM ORDER

          Joseph N. Laplante United States District Judge.

         The parties to this patent infringement action dispute the construction of the claims in three reissued patents for an omnidirectional tilt and vibration switch. Plaintiff and counterclaim defendant SignalQuest commenced this action seeking declaratory judgment that its products did not infringe defendant Ten-Ming Chou's U.S. Patent No. 6, 706, 979.[1] It later amended its complaint to assert the three related patents in question here -- United States Patent Nos. 7, 067, 748C1, 7, 326, 866C1, and 7, 326, 867C1 (collectively, the "SignalQuest patents") -- against defendants and counterclaimants OncQue Corporation, Bravotronics Corporation, and Chou, who is an officer of both companies. This court has subject-matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1338(a) (patents) and 1331 (federal question).

         The SignalQuest patents were granted originally on June 27, 2006, and February 5, 2008. They claim an omnidrectional tilt and vibration sensor, which can be used to switch an electrical circuit ON or OFF. Tilt the sensor one way, and a free-moving conductive element comes in contact with two terminals, completing a conductive path and turning the circuit ON; tilt it another way, and the conductive element moves out of contact with one or both of the terminals, disrupting the conductive path and turning the circuit OFF.

         After SignalQuest amended its complaint to accuse the defendants of infringing these patents, the USPTO instituted an ex parte reexamination at the defendants' request. This court stayed the instant action as to these patents while the USPTO reexamined them. All three patents ultimately reissued in October 2014, though SignalQuest cancelled some claims, rewrote or amended others, and added still other claims in the process. The court lifted the stay after the patents reissued and held a hearing on the parties' proposed claim constructions on January 26, 2016.[2]

         The parties differ over the meanings of a number of terms that appear in several claims of the SignalQuest patents. After reviewing the parties' submissions and conducting a hearing in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370, 388 (1996), the court construes the disputed claim terms as set forth below.

         I. Applicable legal standards

         "[A] patent claim is that ‘portion of the patent document that defines the scope of the patentee's rights.'" Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 835 (2015). The proper construction of a patent's claims is a question of law, albeit one with "evidentiary underpinnings, " that falls "exclusively within the province of the court." Id. at 837-38 (quoting Markman, 517 U.S. at 372). "[T]he words of a claim are generally given their ordinary and customary meaning, " i.e., "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, 1312-13 (Fed. Cir. 2005) (en banc) (quotation marks omitted). The court may depart from the claim's plain meaning under limited circumstances, such as when the patentee acts as his own lexicographer, id. at 1316-17, or clearly disclaims or disavows the claim's scope in the specification or during prosecution, id. at 1317.

         The court does not perform this analysis in a vacuum, but construes the claim terms in the context of the intrinsic record, that is, the claims themselves, the patent specification, and the prosecution history. Id. at 1313-14. At the same time, "[w]hen consulting the specification to clarify the meaning of claim terms, courts must take care not to import limitations into the claims from the specification." Abbott Labs. v. Sandoz, 566 F.3d 1282, 1288 (Fed. Cir. 2009). Though "less significant than the intrinsic record" to this inquiry, the court may also "rely on extrinsic evidence, which 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 (quotation marks omitted).

         II. Analysis

         The parties dispute the meaning of 19 terms as they appear in several independent and dependent claims across all three SignalQuest patents.[3] The court resolves those disagreements as follows, construing certain terms together as the parties proposed or as seems appropriate to the court.

         A. "Diameter" terms

         The parties dispute the construction of the terms "diameter, " "first diameter, " and "second diameter." These terms appear in, for example, claim 22 of the ‘748 patent, which recites, among other limitations:

a first electrically conductive element having a first diameter on a proximate portion of the first electrically conductive element and a second diameter on a distal portion of the first electrically conductive element, where the second diameter is smaller than the first diameter . . . .

         Drawing on the expertise of Merriam-Webster, SignalQuest proposes that "diameter" should be construed as "the distance through the center of something from one side to the other, " and that "[a] first diameter is different from a second diameter in the claims." The defendants request that all three of these terms be construed to cover "any diameter, inside or outside." Finding the plaintiff's definition of "diameter" to comport with the intrinsic evidence, the court adopts it as the meaning of that term.

         The parties do not disagree that a shape's diameter is the measurement of a line drawn from one side of a shape -- often, but not necessarily, a circle -- to another, running through the center.[4] Rather, they dispute its scope. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362-63 (Fed. Cir. 2008) (Markman requires district courts to resolve disputes between the parties as to claim terms' meaning or scope). Specifically, the defendants contend that SignalQuest's proposed construction would limit the measurement to the "outside" diameter -- that is, the distance measured through the center from one external surface to the other. Accordingly, defendants argue, the court ought to clarify that the diameters of the elements recited in the claims of the SignalQuest patents may be measured from one internal surface to another (an "inside" diameter) or from one external surface to another (an "outside" diameter) -- and that the term "diameter" as used in the SignalQuest patents encompasses both of these measurements.

         In support of their proposed definitions, both parties point to Figure 2 of the '748 patent and the accompanying written description.

         (IMAGE OMITTED)

         Defendants contend that D3 in this figure describes an "inside" diameter of the distal portion of the first end cap, whereas D2 and D1 describe the "outside" diameters of the distal and proximate portions, respectively. As SignalQuest points out, the specification distinguishes between D2, the diameter of the distal portion, and D3, the diameter of the "cylindrical gap, " which is, itself, "located central to the distal portion of the first end cap." Id. at 4:66-5:7. The specification further describes the distal portion as containing an "inner surface, the diameter of which is equal to or smaller than the diameter D3 of the cylindrical gap." Id. at 5:26-30. Figure 4 reflects a similar layout for the second end cap. See, e.g., Id. fig. 4; Id. at 6:14-44. Accordingly, when invoking the term "diameter, " the specification indicates which portions of which elements should be measured. The claims do likewise. E.g., Id. at claims 22, 32, 43, 55.

         Neither the claims nor the specification refer to an "inside" or "outside" diameter but rather, as these references make clear, describe the diameters of specific elements of the sensor. None of the intrinsic evidence here suggests that the patentee intended to depart from the traditional, geometric definition of the term. Cf. SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1203-04 (Fed. Cir. 2013) (redefinition requires at least implicit disclaimer of plain and ordinary meaning). Accordingly, the court adopts the plaintiff's proposed construction as the plain and ordinary meaning of the term "diameter." As for the "first diameter" and "second diameter" terms, using "first" and "second" "is a common patent-law convention to distinguish between repeated instances of an element or limitation." 3M Innovative Properties Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003). The patentee appears to have done so here. As an example, claim 22 of the ‘748 patent recites a "a first electrically conductive element having a first diameter on a proximate portion [of that element] and a second diameter on a distal portion [of that element], where the second diameter is smaller than the first diameter." Other claims also recite a "first diameter" and "second diameter" in similar manner. See, e.g., ‘748 patent claims 43, 55; ‘866 patent claims 20, 28, 42; ‘877 patent claims 26, 46, 49. The claim language is thus unambiguous that the "first diameter, " the diameter of the proximate portion of the electrically conductive element, is distinct from the "second diameter, " the diameter of the distal portion of that element. Under the plain language of the claims, the second diameter must be smaller than the first.

         The court accordingly construes the claim language to mean that the "first diameter" is distinct from the "second diameter." The court need not read the first and second diameters' respective lengths into that constructions; the claims themselves do so with sufficient clarity.

         B. "Electrically conductive element"

         The parties also dispute the meaning of the term "electrically conductive element." Again, claim 22 of the ‘748 patent is illustrative. It recites, among other limitations, a sensor having:

a first electrically conductive element having a first diameter on a proximate portion of the first electrically conductive element and a second diameter on a distal portion of the first electrically conductive element, where the second diameter is smaller than the first diameter;
a second electrically conductive element having a first diameter on a proximate portion of the second electrically conductive element and a second diameter on a distal portion of the second electrically conductive element, where the second diameter is smaller than the first diameter . . . .

         SignalQuest asks the court to construe this term as "an element able to conduct electricity." The defendants seek a construction that incorporates this meaning ("any object that conducts electricity across the object") but also adds the limitation that "all parts of element need not be entirely conductive." In short, the parties differ over whether the electrically conductive element as claimed in SignalQuest's patents need be entirely conductive. Finding no support in the intrinsic evidence or the evidence presented for limiting the claim as requested by the defendants, the court adopts the plaintiff's proposed construction: "an element able to conduct electricity."

         This construction is supported by the specification. It describes the sensor as containing "an electrically conductive element embodied as the first end cap, . . . [and] a second electrically conductive element embodied as the second end cap . . . ." ‘748 patent at 4:14-18. The specification is not devoid of guidance as to the composition of the electrically conductive end caps. It suggests that they "may be constructed from a composite of high conductivity and/or low reactivity metals, a conductive plastic, or any other conductive material." Id. at 4:23-26; 6:10-13. The specification further explains that this element's "main function" is to "to provide a connection to allow an electrical charge introduced to the first end cap to traverse the conductive spheres and be received by the second end cap . . . ." Id. at 4:52-55. In order to perform that function, the element in question must be conductive -- that is, able to conduct electricity. Id. at 4:56-58 ("[M]any different shapes and sizes of end caps may be used as long as the conductive path is maintained."). On this much, the parties agreed at oral argument.

         They disagree about whether every part of the electrically conductive elements must necessarily be made of a conductive material. As defendants point out, nothing in the description recited above explicitly requires as much. But the converse is equally true: this description also does not explicitly state that something less than every part of this element must be made of conductive material. It is, in fact, silent on this point. In the face of that silence, the court generally will not read such a limitation into the claim language. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249-50 (Fed. Cir. 1998) (a court generally will not "add a narrowing modifier before an otherwise general term that stands unmodified in a claim.").

         Nor does failing to do so necessarily, as defendants suggest, "read[] in the word ‘entirely' before electrically conductive element." Defendants' Reply (document no. 101) at 3. Indeed, absent such an added limitation, the electrically conductive element may be made completely of conductive material, or it may not -- so long as it is able to conduct electricity. "The patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope." Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012). Defendants point to no evidence that the patentee narrowed this term. The court, accordingly, will "construe the claim to cover all types of that structure that are supported by the patent disclosure, " id., and adopts the plaintiff's proposed construction.

         C. "Electrically insulative element"

         The parties also dispute the meaning of the term "electrically insulative element." This term, too, appears -- for purposes of illustration -- in claim 22 of the ‘748 patent, which recites:

an electrically insulative element connected to the first electrically conductive element and the second electrically conductive element, where the distal portion of the first electrically conductive element fits within a proximate end of the electrically insulative element, [and] where the distal portion of the second electrically conductive element fits within a distal end of the electrically insulative element. . . .

         SignalQuest proposes that this term means "an element that prevents or reduces the transmission of electricity." The defendants do not object to this meaning of the term per se, but ask the court to add, as a further limitation, that "[i]f [the] claims are somehow valid, " the electrically insulative element has a "cylindrical not square exterior shape." They argue that an express disclaimer during reexamination precludes SignalQuest from claiming an electrically conductive ...


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