United States District Court, D. Colorado
STEVEN LEE BRANDT, an individual, JAMES CLAY WALTERS, an individual, and COLORADO BOX COMPANY, INC., a Colorado corporation, Plaintiffs,
VON HONNECKE, an individual, CHASE HONNECKE, an individual, and S & H SHEET METAL, INC., a Colorado corporation, Defendants.
ORDER ON CLAIM CONSTRUCTION
RAYMOND P. MOORE, UNITED STATES DISTRICT JUDGE
matter is before the Court on the parties' request for
construction of certain disputed claim terms contained in
United States Patent No. 8, 999, 029 entitled “Furnace
Filter Box and Method of Assembly” (the “'029
Patent”). The matter is now ripe for consideration.
Based on the record, and the applicable statutes, rules, and
case law, the Court construes certain claims in the '029
Patent as set forth below.
‘029 Patent concerns a furnace filter box, which is
made with various panels (two sides, front, back, and bottom)
and other pieces. The filter box may be shipped disassembled
and its height can be reduced to fit under a furnace.
Plaintiffs Steven Brandt and James Walters are the inventors
of the furnace filter box and method of assembly covered by
the '029 Patent. They filed their patent application on
November 2, 2012, and the '029 Patent was issued April 7,
2015. They are now the former owners of the '029 Patent,
having transferred their interest in the patent to the
current owner, Plaintiff Colorado Box Company, Inc.
stated in the '029 Patent, Plaintiffs' product is
“[a] furnace filter box for mounting next to an intake
air opening in a furnace.” (Abstract.) According to the
'029 Patent, as relevant to this case, a primary object
of the invention is to provide a furnace filter box
“that is adaptable to various sizes and types of air
conditioning and heating furnaces.” (Summary of the
Invention (hereafter, “Summary”), col. 1, ll.
33-36.) Another objective is the furnace filter
box can be “adapted for holding” different size
and width of furnace filters. (Summary, col. 1, ll. 44-46.)
December 22, 2015, Plaintiffs filed suit against Defendants.
Plaintiffs' Second Amended Complaint (“SAC”)
alleges Defendants' “Return air filter box”
infringes “at least” claims 1, 3, 5, and 17 of
the '029 Patent. (See ECF No. 42.) Plaintiffs
assert three claims for relief: direct patent infringement
under 35 U.S.C. § 271(a); inducing infringement under 35
U.S.C. § 271(b); and contributory infringement under 35
U.S.C. §271(c). (ECF No. 42.)
Scheduling Order in Patent Case entered April 4, 2016 (ECF
No. 29), as amended by Order dated June 28, 2016 (ECF No.
56), Plaintiffs' Infringement Contentions were due by
July 21, 2016; the parties' Joint Disputed Claim Terms
Chart was due by December 8, 2016; and the parties'
opening Claim Construction Briefs were due by January 13,
2017. After the parties served or filed such documents, the
Court held a claim construction or Markman
hearing on April 17, 2017. Thereafter, the Court
allowed the parties to submit supplemental briefs. The
parties' papers and oral arguments raised not only how
disputed claim terms should be construed but also which claim
terms in what claims should be construed. In order to address
the former, the Court must first address the latter. The
Court addresses both below.
Local Patent Rules
relevant here, D.C.COLO.LPtR 4(b) provides that a party who
serves infringement contentions shall also serve a claim
chart for each accused product. That claim chart is required
to identify each claim of each patent in suit that is
allegedly infringed by the accused product. D.C.COLO.LPtR
4(b)(1). Thereafter, the parties are required to file a Joint
Disputed Claims Terms Chart which identifies “the
disputed claim terms and phrases and each party's
proposed construction.” D.C.COLO.LPtR 14. The deadlines
for the parties to comply with these rules are set forth in
the Patent Scheduling Order. See D.C.COLO.LPtR 4
infringement is a two-step process. First, the claims at
issue must be properly construed to determine their scope and
meaning. Then, second, the claims so construed are compared
to the accused device or process. Absolute Software, Inc.
v. Stealth Signal, Inc., 659 F.3d 1121, 1129 (Fed. Cir.
2011). At issue before the Court is the first step, which it
determines as a question of law. Markman v. Westview
Instruments, Inc., 517 U.S. 370, 372 (1996).
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) (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115
(Fed. Cir. 2004)). When construing claim terms, the courts
look to, and primarily rely on, intrinsic evidence, which
includes the claims themselves, the specification, and the
prosecution history of the patent. Sunovion Pharm., Inc.
v. Teva Pharm. USA, Inc., 731 F.3d 1271, 1276 (Fed. Cir.
2013). “[T]he words of a claim ‘are generally
given their ordinary and customary meaning.'”
Phillips, 415 F.3d at 1312 (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996)); see also Sunovion, 731 F.3d at 1276.
This 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, i.e., as of the effective filing
date of the patent application.” Phillips, 415
F.3d at 1313.
“person of ordinary skill in the art is deemed to read
the claim term not only in the context of the particular
claim in which the disputed term appears, but [also] in the
context of the entire patent, including the
specification.” Phillips, 415 F.3d at 1313.
This is because the claims do not stand alone. Instead,
“they are part of a fully integrated written
instrument, …consisting principally of a specification
that concludes with the claims. For that reason, claims must
be read in view of the specification, of which they are a
part.” Phillips, 415 F.3d at 1315 (citation
and quotation marks omitted).
addition to the words of the claims themselves and the
remainder of the specification, courts should also consider
the patent's prosecution history, if it is in evidence,
to construe the invention. Phillips, 415 F.3d at
1317. The prosecution history, also called the file wrapper,
“consists of the complete record of the proceedings
before the PTO [Patent and Trademark Office] and includes the
prior art cited during the examination of the patent.”
Phillips, 415 F.3d at 1317. However, as the
prosecution history “often lacks the clarity of the
specification, ” it is “less useful for claim
construction purposes.” Phillips, 415 F.3d at
are also authorized “to 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 (citation and quotation
marks omitted). Such evidence, however, is less significant
than intrinsic evidence in construing disputed claim terms.
Phillips, 415 F.3d at 1317.
The Claims and Claim Terms at Issue
parties dispute which claims as well as which claim terms and
phrases (collectively, “terms”) are at issue.
Defendants contend that claims not alleged in the SAC are not
at issue while Plaintiffs argue that those claim terms
disclosed in the Parties' Chart and Tables (as hereafter
defined) control and Defendants should not be allowed
thereafter to present new terms or modify existing terms. On
this record, the Court agrees with Plaintiffs.
Court starts first with Defendants' argument that only
claims 1, 3, 5, and 17 are at issue as they contend only
those claims are alleged in the SAC. Contrary to
Defendants' argument, the record shows the SAC alleges
that “at least” claims 1, 3, 5, and 17 of the
'029 Patent are at issue. Thus, the SAC did not limit the
claims to only those claims. Moreover, the record
shows the parties agreed that additional claims are at issue.
in accordance with the Patent Local Rules, Plaintiffs served
their Initial Infringement Contentions identifying the claims
infringed as claims 1-6, 8-9, 17-18, and 20. (ECF No. 69-4.)
That was followed by the parties' Joint Disputed Claim
Terms Chart (the “Chart”), again in accordance
with the Patent Local Rules. The Chart identified nine claims
(1-6, 8-9, and 17) involving 20 claim terms which the parties
contended require construction.(ECF No. 63.) In addition, the
parties submitted two tables (collectively, the
“Tables”) in which claims 18 and 20 were added as
those at issue. (ECF Nos. 63-1, 64.) Thus, based on these
papers, the following claims have been jointly
identified and agreed as being at issue: claims 1-6, 8-9,
17-18, and 20. Accordingly, as the SAC did not limit the
claims at issue to being 1, 3, 5, and 17, and the parties
jointly agreed to the additional claims, the Court finds that
claims 1-6, 8-9, 17-18, and 20 are at issue.
the Court addresses which claim terms are at issue. Here, the
parties' Chart and Tables identified specific
terms for construction. As Plaintiffs contend,
Defendants' opening Claim Construction Brief adds at
least one new term (“hinged to a top of the front
panel” (claim 3)) and modifies existing terms to be
construed (e.g., “mounted” instead of
“mounted to” (claim 1)). After agreeing to what
terms are to be construed, the Court finds Defendants may not
thereafter modify or add to such terms. See Howmedica
Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1324-5
(Fed. Cir. 2016) (affirming district court's discretion
in applying local rules to preclude party from arguing
infringement under the doctrine of equivalents). Accordingly,
as necessary, the Court will construe only those claims and
terms set forth in the parties' Chart and/or Tables.
The Construction of the Claim Terms at Issue
positions as to the construction of the various disputed
terms are generally consistent but Defendants' arguments
have substantially vacillated leaving their position
sometimes unclear. For example, in the Tables, Defendants
changed their proposed construction of “right angle
flanges” (claims 6, 8, 9) from “protruding edges
to attach the rails” to “protruding edges for
fastening the rails.” (Cf. ECF No. 63-1, page
4 with ECF No. 64, page 21.) Similarly, as discussed
below, Defendants' proposed constructions changed further
during the Markman hearing and, in some instances,
Defendants ultimately agreed with Plaintiffs' proposed
construction of the disputed term. Regardless, the Court has
considered all arguments, and construes the disputed terms as
“adapted for mounting” (Claims 1,
propose the term be construed as “modified and placed
for use in combination with a furnace, ” to which
Defendants agreed during the Markman hearing.
Accordingly, the Court accepts such
construction. (ECF No. 63-1, page 1; No. 64, page 1.)
“adapted for receiving” (Claims 1,
propose the term be construed as “modified to accept,
” to which Defendants agreed during the
Markman hearing. Accordingly, the Court accepts such
construction. (ECF No. 63-1, page 1; No. 64, page 2.)
“attached to/attaching” (Claims 1, 4,
propose the term be construed as “coupled by joining
together, ” to which Defendants agreed during the
Markman hearing. Accordingly, the Court accepts such
construction. (ECF No. 63-1, page 1; No. 64, page 3.)
“mounted to” (Claim 1)
provides the furnace filter box is comprised of, among other
things, “a pair of horizontal furnace filter rails
mounted to an inside of an upper portion of the first and
second side panels….” (Col. 4, ll. 53-54.)
Plaintiffs propose the term “mounted to” be
construed as “position on to” or
“positioned onto, ” as it is allegedly consistent
with the use of mounted/mounting in the specification.
Defendants initially proposed the term be construed to mean
“securely placed on.” Subsequently, Defendants
argued the term to be construed is “mounted,
” the position they also took during the
Markman hearing. That term, Defendants assert,
should be construed as “set on” or “set
upon” - as something other than “attached.”
stated, the Court will construe those terms set forth in the
Chart or Tables and “mounted” is not such a term.
“Mounted to, ” however, is such a term;